Dear Rich: Nolo's Intellectual Property Blog

Can we use lyrics within artwork?

2012-02-17T06:00:00.000-08:00

Dear Rich: Can I use lyrics in a series of art posters I'm creating? The posters are a collage featuring images of musicians and events from the year that the song was a hit. So, for example, I have images that match a few lines from Marvin Gaye's song, What's Going On, along with a few lines from the lyrics. We're not sure why you bothered asking the Dear Rich Staff. After all, the folks over at Yahoo Answers seem to have already addressed this issue. Oh wait, we see why ... because the Best Yahoo Answer kind of sucks. We're guessing it's the 'Best Answer' because it's the answer that best suits the needs of the person asking the question. Oh well, it will all be over soon!
Right, you had a question. A few months ago we answered a question about using lyrics in a book, and for the most part, the same rules apply when using lyrics in connection with artwork. Limited use of lyrics -- perhaps four or five lines -- may be excused as a fair use. But more extensive quoting of the lyrics requires permission. Of course, if you're just doing a one-of-a-kind artwork, it's unlikely to be an issue (unless you write to the lyricist to share your excitement). But if you're mass producing posters with lyrics and distributing them via the web, you're more likely to trigger a cease and desist letter.

Changed Song Lyrics: Can I Record It?

2012-02-16T06:00:00.000-08:00

Dear Rich: I'm curious how I can copyright a song where I used an existing song and while I changed most of the words I did not change the music. The meaning is entirely different but I'm sure I can't legally record the song without consequences. Based on your web article "How to Obtain Sample Clearance" it sounds like there is no chance for me to legally sell my version of the song if the copyright owner or artist/songwriter doesn't grant permission. The chances of me making a lot of money are slim but I'm happy to pay some type of royalty or percentage of revenue in the event it is successful. Sometimes there's gold in those changed lyrics. When Ken Darby changed the lyrics to Aura Lee (a public domain song), the result -- Love Me Tender -- became a monster hit for Elvis Presley. If you're wondering why that song is credited to Presley and Vera Matson, Darby's wife, that's because Presley demanded co-writing credit for many songs he recorded regardless of whether he actually wrote them. When asked why Darby credited his wife instead of himself, he supposedly replied, "Because she didn't write it either."
Right, you had a question. You asked how you can copyright a pre-existing song whose lyrics you have modified. We suppose you could file a Form CO, claim authorship of the lyrics and then, in section 4 (Limitation of Copyright), state that you are not claiming any copyright to the pre-existing material (name the song and provide its copyright registration number). Doing that won't really gain much for you because you still can't perform or record the song without the permission of the underlying song owners. So, we'd recommend scratching that strategy.
How can you record the modified song without being sued? We think that's the real question you're asking. Under copyright law, you need to seek permission from the song owner to record it if you materially alter the song. We doubt whether a publisher is going to grant permission to modify lyrics to a song, although it's always possible. (By the way, none of this has anything to do with sample clearance.) Of course, if you hadn't materially altered the lyrics, you wouldn't need to ask for permission, you could simply pay a fee to a service such as Songfile (Harry Fox) or Limelight, and obtain a compulsory license. Knowing this, some musicians use a halfway measure -- they pay for the compulsory license and use their modified version of the song. Even though that doesn't meet the standards of copyright law, the thinking is that by paying for the license, the musician demonstrates good faith and hopefully, the song owner won't care to hassle those who pay for licenses.

Can We Use Photos for Design Patent?

2012-02-15T06:00:00.000-08:00

Dear Rich: We're getting ready to file a design patent for some gaming gloves and have not been able to get formal drawings done. We're in a hurry. Can we use photos instead of drawings? As a general rule, it's best to submit drawings. They can be prepared fairly quickly by many patent drawing services (or at least so they claim on the web). Type "patent drawings" into your search engine. As for using photographs in a design patent application, you can use them under the following circumstances:

Color photos. The USPTO only accepts color design photos on "rare occasions" if they are the only practical way to show the design. You must file a petition explaining why the color photographs are necessary.
Black and white photos. You can use black and white photos if they are "the only practicable medium for illustrating the claimed [design]." We can't tell you if your gloves qualify under this standard but you can read more about the USPTO's standards for patent drawings.

Also, you can furnish informal drawings with your application although the USPTO will not examine your application until formal drawings are furnished. By the way, we've created a design patent site where you can read more about design patent drawing rules.

Can We Trademark Cupid?

2012-02-14T06:00:00.000-08:00

Dear Rich: We want to come out with a line of cat food products using Cupid in the name. What do you think? We think you're very patient. We've been saving this question for several months in order to run it on Valentine's Day and express our big love for readership and our staff. Of course, now that the big day has arrived, it seems kind of anticlimactic (though not anticlimatic).
Right you had a question. We're not sure how you will be using the term 'Cupid,' but our preliminary search of the USPTO trademark records only turned up two Cupid registrations for food products (and those were for human foods, not pets). (Reg. Nos. 3508736 and 109397.) We didn't see any Cupid registrations for pet foods or pet products. So it appears as if the coast is clear. Of course, we're not an official trademark searching service and can't guarantee our results, blah, blah, blah. Also, if you don't want to wait several months for our staff to provide your next search results, check out our trademark searching video to learn some of the tricks of the trade.

Can We Use Dragnet Tagline?

2012-02-13T06:00:00.000-08:00

Dear Rich: I would like to reprint the line, "All we want are the facts, ma’am." I cannot confirm if this is in the public domain/fair use. Any information that you can provide is appreciated. If you do not know the answer can you refer me to someone who can help? We wish we could refer you to someone, but alas, we don't know of anyone else providing free legal information about Dragnet dialogue. So, here goes:

Under copyright law, you're okay to reprint the line. It's too short by itself to be protected. (We've written an article on the subject, as well.)
Under trademark law, you should be okay (except for using it on entertainment services and related merchandise). No one has registered the phrase, although there have been registrations for the more well-known but never-uttered-on-Dragnet line, "Just the Facts" (made popular by a Dragnet parody.) Oddly enough, the "officially licensed" merchandise uses "Just the Facts" (Go figure!) In any case, avoid using it for entertainment services or you may hear from Jack Webb's estate. BTW, if you plan on using the phrase to sell products or services, it's always wise to search USPTO records, first.
For right of publicity reasons, we would advise against any attempts at commercially exploiting the phrase in connection with Jack Webb's image or personna. If the estate learns of the use, they'll likely come after you.

Are Insurance Filings Exempt as Trade Secrets?

2012-02-09T06:00:00.000-08:00

Dear Rich: My question is, out of the 43 states that have adopted the Uniform Trade Secrets Act, which of those states exempt trade secrets from becoming public information in an insurance filing (insurance filing)? I need to know this for my job and I need to find out what language each state uses to exempt the insurance filing. For example, Alaska has adopted the UTSA (Alaska, Stat. Secs. 45.50.910 et seq.). So now I need to find out if Alaska exempts trade secrets from becoming public information. Our apologies, but 47 (not 43) states and the District of Columbia have adopted some version of the Uniform Trade Secrets Act (UTSA). We recently updated our site to include more current adoptees. (The remaining UTSA holdouts are New York, Massachusetts, and Texas).

Where in the world is ... We couldn't tell you which states have exempted insurance filings as trade secrets because that information -- as far as we can tell -- is not provided in each state's UTSA. For example, Alaska's trade secret law makes no mention of Alaska's trade secret exemption for insurance filings (scroll down to Sec. 21.39.035). This article can start you on the right course but you may want to suggest that your employer subscribe to a service from a company like this. And of course, as you may know all this may be changing as the trend may be heading away from secrecy in insurance filings.

Claiming Glazing Technique as Trade Secret

2012-02-08T06:00:00.000-08:00

Dear Rich: I have a crafts business and I've developed some ceramic glazing techniques that are pretty unique. I took on an assistant in 2008 and trained her to do these techniques. I've always told her not to tell anyone about the process or materials used in the glazing and as far as I know she never has. The trouble is that she has gone out on her own and is now competing against me at local fairs and stores using some of these glazing techniques. Is there anything I can do? Maybe. If you can claim that the techniques are your trade secrets, you may be able to prevent your former assistant from using them. As we explain here, you need to prove that the process is not generally known within your industry and that you've taken reasonable steps to keep it confidential. Here is an article detailing the steps you should take if a secret is stolen (and you can follow up with a cease and desist letter). You don't have to have a nondisclosure agreement (NDA) with your former assistant because most states have laws in place that prevent trade secret misappropriation (theft). It may also make a difference if the assistant is characterized as an employee or as a contractor. By the way, in the future, you might want to use an NDA and at this site we've provided a basic one (click on the section titles for explanations) as well as a selection of specialty NDAs. Also, if the assistant has copied any of your ceramic imagery or copyrightable designs, you may be able to pursue the assistant under copyright law. Check out our crafts law book for more details.

Can We Republish Sports Statistics?

2012-02-07T06:00:00.000-08:00

Dear Rich: We are frequently publishing sports books about notable persons or events in sports history. As a matter of fact, sports has - almost always - to do with statistics and results. I was very astonished to read on some websites that it is not quite clear if sports statistics are really public domain and that especially the pros like MLB, NFL, NBA and NHL are very keen on protecting what they think of could be THEIR stats and records. I would be thinking that stats are facts and can not be copyrighted at all? Yes, individual sports statistics are facts and as the Supreme Court has indicated, "No one may claim originality as to facts." (The Copyright Office seconds that emotion.) In a 1997 case, the NBA went after a paging service that borrowed a live feed from a basketball game. A court of appeals ruled that sports stats couldn't be protected -- for example, no one can claim rights to the name of the teams playing, changes in score, team in possession of the ball, whether the team was in free-throw bonus, the quarter of the game, and the remaining time in the quarter. Despite that ruling, other leagues such as the NFL, PGA, and MLB have unsuccessfully gone after fantasy sports leagues or other users who have ported their stats.
You're unlikely to run into problems because ... Keep in mind that many of these legal battles deal with more than stats -- for example, some of these cases also dealt with a company's right to use a sports star's name or likeness. And, also, these sports franchises tend to flex their muscles in cases where they have big targets such as Motorola or Yahoo! Aside from the exceptions cited below, we think you can freely use sports statistics in your books.
When could it be an issue? You could run into problems if you seek to lift a complete database of information -- for example, you copy a 10,000 entry database entitled "A statistical analysis of home runs scored when a right handed pitcher faces a left-handed batter." That's because a collection of facts can sometimes be protected under copyright as a compilation (if selected and organized with some creativity). In addition, databases are also sometimes protected under license agreements. So, for example, if you're at a league website and you click on a "I Agree" button under which you promise not to copy data, you may be bound by that agreement despite the fact that copyright doesn't protect the underlying data.

Using Quotes and Seeing Ghosts

2012-02-06T06:00:00.000-08:00

Dear Rich: I put together a book with quotes from various famous individuals and my own professional photos to encourage inspirational thought. I do not want to produce the book before I can clear the licenses. How does one go about clearing the licensing for that? Some authors, such as Seneca lived around 75 B.C. I guess for these authors I don't need a clearance? You guessed right. There is little chance that Seneca will rise from the grave (Dracula-style) and retain Boies, Schiller to smite all those who have malapropped his quotations. In any case, any reputable law firm would inform him that his texts, all published long before 1923 are in the public domain. As for the rest of your quotes, we think you're fine to use them for reasons we expressed two years ago and which we're too lazy to rewrite (and thereby up our SEO). You may wonder whether you can trust our response because as Seneca says, "advice is worth what you pay for it." But keep in mind he made that remark before the existence of freebies.

Music Licensing Resources

2012-02-04T06:00:00.000-08:00

It was great seeing everyone at the 2012 California Lawyers for the Arts Music Business Seminar in Berkeley. Here are some resources to augment the music licensing discussion:

Generic licensing provisions and explanations: We've posted examples and explanations for common generic content license agreement provisions. These should provide a basic understanding of the structure and organization of a typical license.
Licensing songs and recordings for film and TV. There's an example of a Music Synchronization and Videogram License (with explanations) in our book, Getting Permission. That book also contains examples for a MasterUse and Videogram License (for licensing sound recordings) and an agreement for licensing lyrics. You can also view examples of similar agreements online, for example here, here, and here.
Licensing music for videogames. This ArtistsHouse page has a relevant article and video about music licensing for videogames. As EA's Steve Schur explains, the sync and master licenses mirror the agreements used in film licensing. As Schur also explains, when creating EA's theme music, EA seeks assignments, not licenses. ASCAP has posted a nice article on the elements of a videogame license.
Copyright. There's a fairly thorough explanation of music copyright, and how to distinguish co-ownership issues in our Music Law book. We've also provided free copyright information at the Stanford Library site, and at Nolo's site.
Getting legal help. California Lawyers for the Arts (or one of the other lawyers for the arts organizations throughout the country) should be your first stop. If there are no organizations near you, consider directories from Nolo (disclaimer: our employer) or Cornell University. Nolo also has articles on dealing with lawyers, including working with lawyers, fees, and attorney-client relationships.

Dear Rich Staff at CLA Music Seminar

2012-02-03T13:13:00.001-08:00

The Dear Rich Staff is sending an emissary to speak at the California Lawyers for the Arts annual music seminar. It's Saturday, February 4, at Boalt Hall in Berkeley and we'll be part of the 2:35 panel on music licensing. Check out the details.

Invented New Word and Wants to License It

2012-02-03T06:00:00.000-08:00

Dear Rich: I have created a new word, purchased the dot com and have filed the mark in several classes with the USPTO with "intent to use." I will need a manufacturer to produce products bearing the name of the mark and I am now quite concerned with the costs that would entail. My questions are: (1) Can I approach manufacturers to discuss licensing the mark prior to being in commerce? (2) Can I sell the mark and domains associated prior to registration? Word Up! Even though there are a quarter of a million words available, it's good to know that people are still creating new ones.
Approaching manufacturers. We think you'll have a hard time convincing manufacturers to buy rights to your word. All the made-up words that we've seen used as trademarks -- for example, Nerf, Kodak, Viagra, and Kleenex -- are usually associated with new products. (Actually, Nerf is an acronym for Non-Expanding Recreational Foam.) So unless you also have some proprietary product ideas to go with your new word, we think you're headed in the same uphill direction as Sisyphus.
Can you claim rights under an intent to use application? A manufacturer is going to want an assurance that you have rights to the mark. We know you'd like to use the word as a mark but do you actually have a bona fide intent to use the word as a mark? As this case and others have shown, without actual evidence of your intent (more than a desire to profit), your claims over the word may be subject to challenge. Here's more on the subject.
Can you sell what you have? Sure, you can sell the domain names anytime, no problem. But we don't think anyone would want to pay for the "trademark rights" because you won't have any rights until the word becomes a trademark. That occurs after the mark has been used in commerce. We think this is one of those cart-before-the-horse situations and suggest you could save money on trademark fees by reading up on some of Nolo's excellent trademark articles.

Re-Drawing Movie Still at a Website

2012-02-02T06:00:00.000-08:00

Dear Rich: I saw your entry on "Using Movie Stills at a Website." What if I draw a picture from the scene? Is that still copyright infringement? Would the quality of reproduction also have a factor (i.e. a very realistic recreation of the still vs. something more paint-like)? As we mentioned last February, unauthorized reproductions are infringements unless excused by a defense such as fair use. The same rules apply for unauthorized derivative works and these can trigger the same legal responses as straight infringements (as Shepard Fairey learned when he created his artsy Obama Hope imagery -- which has triggered its own derivative infringements). You don't protect yourself by making a more "artistic" derivation. It's infringement as long as a lay observer believes that the underlying (or preexisting) work has been copied (for example, as in the example, above). In any case, this legal mumbo-jumbo we're spouting is ignored by millions of people on the web every day. So, the real question is whether your creation of an unauthorized derivative work based on a movie still will make somebody so mad that they'll come after you, take your home, car and new Mac laptop. As usual, we couldn't tell you ... though as we've mentioned before, you're likely to be better off if you use smaller images (thumbnails are best), you don't poach from popular licensing sites such as Getty Images (that regularly troll for their digital fingerprints), and you don't use the image more than once, or for commercial purposes such as merchandise. And of course, the popularity of your site may also make you a more likely target.

Cover Songs, Compulsory Licenses, and CPAs

2012-02-01T06:00:00.000-08:00

Dear Rich: We decided to take the compulsory license route for seven songs on our fourth album. We were comfortable with the idea of paying monthly royalties to seven music publishers, because we only made 150 CDs and we thought the monthly task probably wouldn't last too long. We also thought it would minimize some of our initial costs in making and releasing a new album. However one music publisher sent us a letter stating that since we chose the compulsory license route, we must furnish an annual statement certified by a CPA; otherwise, we "would be in default with respect to the Compulsory License guidelines." I knew that an annual statement needed to be furnished, but I didn't know it had to be certified by a CPA. We phoned and e-mailed the other six music corporations and asked if they wanted an annual statement certified by a CPA, and all six were very nice and told us they didn't want the CPA certification and that the monthly statements were enough. We started conversations with the CPA who does my business partner's taxes, but he didn't want to take any risk of signing his name on a piece of paper that confirmed the number of CDs we sold in 2011 matched the amount of royalties we paid to Bourne. I spent about ten hours preparing clear instructions and documentation (receipts, evidence, etc.) that prove we only made 150 CDs in 2011, sold 71 in 2011, and have 79 remaining, but the CPA was only willing to sign his name if the language on the annual statement said he can't provide any assurance or guarantee that our payments and inventory are correct. To us, this seemed ridiculous, especially since we agreed to sign a waiver of liability. Do you happen to know of a CPA who speaks our language and who can probably certify our simple annual statement? Sorry about the agony (or "ag" as the young people say). Considering that the total sum at issue appears to be $6.46 (9.1 cents per song per pressing x 71 copies = $6.46), we think there's got to be a simple solution.
What happens if you don't include a CPA statement? Congress (in 17 U.S.C. Sec. 115) empowered the Register of Copyrights to create CPA regulations (found at 37 CFR 201.19,) for compulsory licensing accounting. (And yes, Annual Accountings under compulsory licenses must be accompanied by the CPA's statement, shown way at the bottom of this blog entry). Sec. 115 (6) provides that:

"If the copyright owner does not receive the monthly paymentand the monthly and annual statements of account when due, theowner may give written notice to the licensee that, unless thedefault is remedied within thirty days from the date of thenotice, the compulsory license will be automatically terminated.Such termination renders either the making or the distribution,or both, of all phonorecords for which the royalty has not beenpaid, actionable as acts of infringement ... "

So, if we assume that failing to include a CPA notice places you in default, you would only be liable for any future sales (after receiving a notice of default). So perhaps an easy solution would be to pay off the remaining 79 CDs ($7.19). Once the publisher cashes that check (and assuming you don't press any more CDs), it appears that the CPA issue would be moot. Alternatively, if you don't want to pay it off and you want to continue pressing and selling the cover song, you could send a letter to the publisher explaining the situation and furnishing all of the documentation asking them to please release you from the onerous CPA requirement.
What's up with your CPA? We're lawyers so we can relate to the CYA mentality exhibited by the CPA. Standard accounting practices for small labels are fairly simple and easy to review and confirm. If you used a duplication service that can confirm 150 pressed CDs, and 79 CDs remain in inventory, it should be relatively easy for the CPA to confirm your accounting and to fulfill the requirements established in the statement, below. (As for your question, sorry, we don't know any CPAs.)
CPA statement that must be included. If you do manage to obtain a CPA's cooperation, the CPA must furnish the following statement:

"We have examined the attached “Annual Statement of Account Under Compulsory License For Making and Distributing Phonorecords” for the fiscal year ended (date) of (name of the compulsory licensee) applicable to phonorecords embodying (title or titles of nondramatic musical works embodied in phonorecords made under the compulsory license) made under the provisions of section 115 of title 17 of the United States Code, as amended by Pub. L. 94-553, and applicable regulations of the United States Copyright Office. Our examination was made in accordance with generally accepted auditing standards and accordingly, included tests of the accounting records and such other auditing procedures as we considered necessary in the circumstances."

What Do We Need to Cover a Song?

2012-01-31T06:00:00.000-08:00

Dear Rich: Do we need permission by the original author/creator of a song to sell/distribute a song cover, or is it simply enough to credit the original creators on the release? What are the basics of licensing/clearing a cover song? Speaking of covers, we recently stumbled on Willie Nelson's version of The Warmth of the Sun. We wondered if this video was around when Willie was having his tax problems, because if it was, we don't see why the judge didn't dismiss all charges and grant Willie sovereign immunity. P.S. The song has a different meaning when you learn it was written the night that JFK died.
Right, you had a question. Check out our response to a similar question last September. And if you're still having trouble sleeping, check out all our other responses dealing with covers and compulsory licensing. (Type "compulsory license" or "cover song" into the "Search Dear Rich" box on the right.) Also, our book, Getting Permission, explains the procedures in detail.

Trademark Renewal Scams

2012-01-30T06:00:00.000-08:00

Dear Rich: I have a trademark registered at the USPTO. I got a letter from a trademark renewal service in Washington, D.C. warning that my trademark has to be renewed right away. But according to your books, my trademark doesn't need to be renewed for another 9 months. Who's right? You know those people who are busy protecting your inheritance in Nigeria? Apparently they are also watching out for your trademark. We believe your letter is one of many trademark renewal scams. Typically, it starts with a pseudo-official letter from some company that sounds like it's affiliated with the government (scroll down for a list of possible offenders). They've mined your information from the USPTO database and the reason you're hearing from them so far in advance of the actual renewal date is that they want to pre-empt any mail you might get from a legitimate source such as your attorney.
Other scams. There are other trademark scams. For example, the Dear Rich staff got a letter a couple of weeks ago from this company offering to "publish" our registered trademark data on the Internet in return for $589 payment. Wait ... for the price of a Droid Bionic, the TMP crew will duplicate what the USPTO and Trademarkia already do for free. (Our favorite part of the letter -- a pathetic and ineffective attempt to avoid U.S. jurisdiction -- said, "It shall be pointed out that TM Publisher Corp. has its headquarters in Switzerland and the postal address in the USA serves the customers to handle payments ... ") BTW, one law firm has recently gone after an alleged TM scammer.
Two post-registration dates you need to know. Just so you know, if you miss two keys dates, your federal registration will be canceled.

Continued Use. Sometime during the fifth year after federal registration -- that is sometime between the fifth and sixth anniversary of federal registration -- you must file a "Declaration Of Continued Use Or Excusable Nonuse Under Section 8." The requirements are here. So if your mark was registered on July 1, 2007, sometime between July 1, 2012 and July 1, 2013, you must file the Section 8 declaration.
Renewal. File within six months prior to end of the tenth year of registration.

If you miss either of the deadlines, there is a six-month grace period to correct the error, provided you pay additional fees.

Wants to Use Heinz Quote

2012-01-27T06:00:00.000-08:00

Dear Rich: There is a very well-known quote by someone named Heinz von Bergen (often found online as "Heinz V. Bergen"), which reads as follows:"Information is the seed for an idea, and only grows when it's watered." I have searched far and wide on the Internet for some source that would clarify if this quote is in the public domain, and/or information on Heinz von Bergen himself. We don't mean to offend, but this quote sure sounds like the kind of thing Steve Carrell might spout on an episode of The Office. Anyway, does information (which is a collection of facts) actually grow? (It seems to us that information exists and we discover or categorize it.)
Right, you had a question. Regardless of whether you can find any information on the originator of this quote -- and our hard working staff couldn't find much on Heinrich von Bergen, Heinz von Bergen, Heinrich v. Bergen, or Heinz v. Bergen -- you can use any short quote freely. As we've noted in the past (type "short phrase" or "quotes" into the Search Dear Rich Box, right) copyright doesn't protect short phrases.
PS Dept. If you're looking for "idea" quotes, what about this one as an alternative -- "A half-baked idea is okay as long as it's in the oven."

Old Band Videos: No Releases

2012-01-26T06:00:00.000-08:00

Dear Rich: We have extensive old video footage of bands (a lot of it is over 15 years old) that I have been dubbing and want to try and do something with online and try and make a little cash. The bands were aware we were filming and had the option to purchase the masters, but chose not to. Could these be considered our art as we shot them and physically possess them. Most of the bands are now defunct and it would probably be hard to track them down for a release form, as most of our dealings were verbal agreements. If we start to do new ones, I would get a release from the band, but even if they signed it, would we (video crew people) be able to upload and charge for others to view and or purchase them? Just thinking about the legal hoops you will have to go through has made us turn up the caffeine drip. (We've set out the legal rules below.) May we suggest another strategy? Forget everything we're about to say and just do what you want. Unless one of the former band members later became a lawyer (and it happens) or is willing to hire an attorney, chances are likely your posted videos will become just more flotsam on the sea of low level infringements that are either drowning or enhancing popular culture (the grand jury is still out on that one). In any case, based on the odds, you're likely to survive intact. If there is an objection you may have to take down the video (not unlikely), or you may even have to deal with a lawyer (possible, but unlikely). However, what is extremely unlikely is that DOJ helicopters will land on your front lawn, forcing you to retreat to your safe room with a shotgun. (And can anyone tell us what's to become of the copyright of the fabulous MegaUpload theme song?)
Right, you had a question. You probably own the copyright in the videos because you shot them. The band (or their publishing company) probably owns the copyright in the songs (unless they are cover songs). If you want to include copyrighted music in a video, you need what's called a sync license from whoever owns the song publishing. Getting releases would help as you plan to make money from the band's trademarks and the members' individual personas. (BTW, whoever owns or possesses the masters doesn't matter too much; what usually matters the most is who possesses the legal rights.) BTW2, we've answered similar questions before (just type "sync license" into the "Search Dear Rich" box on the right) ... just sayin'.

Can We Require Positive Uses Only?

2012-01-25T06:00:00.000-08:00

Dear Rich: We would like to add some "usage" language regarding an electronic (on a flash drive) media kit that will contain artwork, photos and logos. The language would let the media know that they can only use the downloadable items in a "positive, non-defamatory manner." Is there "boiler plate" language that I can use for this purpose? If your goal is to prevent people from using your copyrighted materials for anything other than "positive, non-defamatory" purposes, we think you need to rethink your goals. It's a little bit like a music company telling a music reviewer she can reproduce an album cover ... but only if the review is favorable. We think situations like this create hurdles of enforceability.
Is it a warning or a contract? When you allow people to reproduce your content, you are granting a license. But in order to create a binding license -- one that permits you to step in and stop unauthorized uses -- you need to prove that you entered into an agreement. As we've mentioned before, the most effective end-user licenses (EULAs) require some type of actual agreement -- typically a click-to-accept checkbox or button. These mechanisms for "agreeing" come in many shades and as a general rule, the easier it is to demonstrate that the other party agreed to the terms and conditions, the easier it will be to enforce the agreement. On the other hand, some licenses -- such as Creative Commons licenses -- require less proof of consent. These are more like warnings that say, we will not sue you for copyright infringement if you do certain things (for example, provide attribution) but we will sue you if you don't.
Defamation and "positive" purposes. If a user defames you or your company, you don't need a EULA to go after them. Defamation laws permit you to recover damages regardless of the licensing arrangement. Your biggest challenge is to be able to define positive uses. For example, which meaning of 'positive' are you referring to? Certainty, acceptance, and affirmation (as in "positive criticism"), or a use that implies moving forward in a direction of increasing progress? Does the use have to be 100% positive? What if it is 40% positive? Is it a subjective, arbitrary, or objective standard? Unless you can set forth a clear definition of the uses that are acceptably positive, you will have difficulty enforcing this vague contractual condition in court (and the ambiguity may even invalidate the agreement).
Fair use? Finally, always keep in mind that copyright laws permit limited unauthorized uses of copyrighted materials for purposes of commentary or criticism. Whether fair use trumps a license agreement, or whether the license agreement is valid are matters that would need to be decided by the courts. Depending on the size of your distribution network, you may want to prohibit all uses -- with the exception of the right of the user to load and view on the user's computer -- unless approved by you. That would allow you to have total control over reproductions.

Is the Warhol Banana Public Domain?

2012-01-24T06:00:00.000-08:00

Dear Rich: I read that the Andy Warhol banana is in the public domain. Does that mean anyone can use it? The Dear Rich Staff is so old that we remember when our friend, Paul Dodd, bought the 1967 Velvet Underground album, The Velvet Underground and Nico. The cover featured a peel-able banana (underneath the yellow banana skin was a flesh colored banana). Alas, subsequent pressings weren't peel-able. The image was so popular that VU fans eventually referred to the recording as the "Banana Album."
PD or not PD? The Warhol image on the cover may now be in the public domain -- at least that's what the VU's founders hope. They recently sued the Warhol estate over the licensing rights to the image. The VU claims that the image is in the public domain because the album cover was printed in 1967 without copyright notice. Back in the old days (pre March 1989), a published work had to contain a valid copyright notice to receive protection under the copyright laws. (This requirement is no longer in force -- works first published after March 1, 1989 do not have to include a copyright notice to gain protection under the law.) The VU's founders are asking the court for a declaration that the banana imagery is PD which will make it easier for the band to argue that the image functions as the band's trademark and that they, not the estate, are entitled to licensing revenues. You can read the gruesome details of the lawsuit here.
Bottom Line Dept. We wouldn't presume Warhol's banana is public domain until a court rules on the matter. Even if it is public domain, it's unclear whether the VU can assert trademark claims and how far those claims will go -- for example, whether the VU can prevent use of the image on non-band related merchandise.

Ryan Gosling Memes: Infringing?

2012-01-23T08:48:00.000-08:00

Dear Rich: I read your explanation about using paparazzi photos and it made sense. But then how do you explain the Ryan Gosling meme? I assume that most of the photos that are being used were taken by professional photographers, and I doubt if many of the web sites and Tumblr accounts that have been spreading them are paying for permission to use the images. How can you know when it is ok to use an image without getting permission? For those over-worked readers who are always late to the viral party (and perhaps still not familiar with Rebecca Black, Obama Girl, and LOLcats), the Ryan Gosling meme refers to the collection of Ryan Gosling photos that are modified with captions -- always a short statement attributed to Ryan that starts with "Hey Girl" and follows with some invitation to intimacy or a proclamation of love, devotion etc. The meme has split into various trails, including a feminist Ryan Gosling meme and a Silicon Valley RG meme (that includes a rare patent law reference).
Hey Girl, Can You Copy Me? As for the legal rights connected with meme-ing, the Dear Rich Staff believes that if you're asking about permission to use Ryan Gosling photos, you're also probably wondering about how often you need to get your cholesterol checked. In other words, folks who meme usually don't care about no stinking badges. It's true that all of the Ryan Gosling photos are likely protected by copyright law, but for some reason we're not hearing of any copyright owners going after these folks (and Ryan, himself seems to condone the use as well -- so much for right of publicity claims). Of course, the Internet use is one thing -- and we can understand why copyright owners might be gun shy about going after a popular meme -- but the reproduction in a book does require permission (and is expensive -- scroll down to the Jan 14 blog entry). Although some copyright owners do have a breaking point, we think most of these fleeting Internet memes tend to fly under copyright radar.

Should I Reveal My Invention to Attorney?

2012-01-20T06:00:00.000-08:00

Dear Rich: I have a series of inventions, but for right now my only focus is one and it is one of rather strong global consequence. Which is a big statement to make I know, but I also know what it means for global health. I am feeling trapped just by my ignorance of the best way to protect myself and even though I am going to an I.P. lawyer tomorrow the intimidation factor is quite strong. I know enough to inquire of the attorney's engineering background, patent experience and a full quote as well what payment arrangements would be expected and a reasonable expectation of a timeline. I do not really intend to reveal what it is I have as I am so afraid of losing the control of it, it's that attractive. The application is industrial in nature and affects every single exhaust source in the world. I realize you will read this most likely after my initial meeting but I intend to basically interview this lawyer, test the waters and listen closely. We're not sure what your question is, but we assume it has to do with whether you should (or when you should) make invention disclosures to an attorney. We know that many inventors see attorneys and manufacturers as wolves in corporate clothing and although we don't agree, we understand the paranoia. We're reminded of David Mamet's 1992 movie, The Water Engine, in which the creator of a machine that ran on water -- loosely based on the tale of these inventors -- was double crossed by crooked patent attorneys. The inventor had the last laugh (spoiler alert) when he prevented any commercialization of his invention and his patent drawings turned to dust in an attic.
Invention = disclosure. At some point every inventor who wants to commercialize an invention must make disclosures. These disclosures may be to the patent office, to business partners, to attorneys, or to manufacturers. Even if you seek to protect your invention under trade secrecy law, you will need to disclose it to others under the protection of a nondisclosure agreement.
Attorneys and disclosures. There is no reason you must disclose your invention at your preliminary meeting with your patent attorney. But if you retain this attorney, you will have to disclose your invention. Otherwise the attorney cannot properly assess its value and the protection it requires. Your communications with the attorney are privileged, meaning that unless you authorize publication, the attorney cannot disclose what you say. (BTW, USPTO rules establish confidentiality requirements for patent agents.) One situation in which you must make a public disclosure is if a patent application is filed. Unless you do not plan on filing foreign applications, your U.S. patent application will be published eighteen months after you file. Alternatively, if the patent is granted, it will also be published.
The trick with disclosures ... We believe that proper precautions should be taken when making invention disclosures. Maintain your information with secrecy and only disclose it under the protection of privilege, or nondisclosure agreements. But, perhaps more importantly, try to use personal radar to determine whether you can trust those to whom you have made disclosures. For example, prolific inventor Maurice Kanbar had a strong35-year relationship with his patentattorney, Mike Ebert. In his book,Secrets from an Inventor’sNotebook, Kanbar wrote:

“Mostbasically, you need to beable to communicate withyour attorney. I can callMike on the phone,describe my idea and detailits mechanics and Mike will ‘get it’instantly and start writing it up. If anattorney has a different understanding ofyour invention, or if he or she doesn’tquickly get your drift, go elsewhere.”

Voice-Over Release and Audiobook Permissions

2012-01-19T08:32:00.000-08:00

Dear Rich: How can I get permission to record a book for audio production? Do I write to the publisher and author? If the author has signed a publishing contract (that is, the book is not self-published), chances are good that the publishing company has the audiobook rights. That's standard operating procedure for everyone except superstar authors. If you're an experienced audiobook producer, the publisher will likely respond to your inquiries. But if you don't have much experience -- for example, you haven't got any of your productions at audible.com -- chances are slim that a publisher will negotiate with you. If the book is self-published -- for example, it's offered via Createspace -- the author retains the rights and it should be easier to contact and negotiate.
What's a novice audiobook producer supposed to do? One way to break into the audiobook production world and acquire experience is to record public domain books (and there are a few centuries of good material available to download). (We just finished listening to Leo T.'s Anna Karenina and wow, that was amazing!!) Another possibility is to sign up with the Audiobook Creation Exchange (ACX), sponsored by audible.com. That system pairs audiobook producers with established publishers and authors. We've prepared a free sample voice-over release to use with your narrators. You can read more about it, here.

SOPA vs. SOAP

2012-01-18T06:00:00.001-08:00

Which is worse?

Join us in not using soap today!

SOPA (Stop Online Privacy Act)	Soap (as in detergents)
Enables the Department of Justice (or private parties) to "blockade" so-called pirate sites outside U.S. jurisdiction by cutting them off from search engine results and AdSense revenue.	Enables freshwater fish to better absorb pesticides and phenols often causing twice the damage to wildlife.
Destroys the safe harbors of the DMCA.	Destroys the external mucus layers that protect fish from bacteria and parasites and causes severe damage to the fish gills.
Could make non-pirate sites (such as Yahoo, Flickr and Scribd) liable for infringement.	Could – in the case of antibacterial soaps that contain triclosan – cause hormonal/endocrine damage in humans.
May contribute to loss of jobs and diminished revenue in the tech sector.	May contribute to major phosphate pollution and toxic contamination of the Great Lakes and other waterways. (In 2010, 16 states banned phosphate sales causing many consumers in need of "sparkling" dishes to travel across state borders to buy "contraband.”)
Say No to SOAP and SOPA!	Our SOAP facts came from: http://www.lenntech.com/aquatic/detergents.htm#ixzz1jla3654n http://asunews.asu.edu/20110215_halden_triclosanbriefing http://www.washingtonpost.com/wp-dyn/content/article/2010/04/07/AR2010040704621.html http://www.environmentalleader.com/2010/06/29/sixteen-states-ban-high-phosphate-soap/

Getting Paid for Reporting Software Infringement

2012-01-17T06:00:00.000-08:00

Dear Rich: Is it true you can get paid for reporting software infringement? I would love to report an ex-employer. Does it matter if I am in Ohio and the ex-employer is in Indiana? Yes kids, here's another way to make money at home! Apparently, you can earn some serious bucks for reporting software infringement (provided the report results in a settlement or judgement). The Business Software Alliance will cut you in on payments it receives as result of your reports. You need to fill out a form and proceed through the BSA process. It doesn't matter where you are located as long as the employer is located in the U.S.

Won't Pay for Photos: Can We Demand Takedown?

2012-01-16T06:00:00.000-08:00

Dear Rich: I am a professional photographer with question about transfer of copyright.Recently I did a job for a customer. As usual I provided them the images and sent them an invoice. The invoice clearly describes the permitted usage and terms for payment.The customer sent the images to a major retail chain to use on their website, which is apermitted use. Currently they are about 60 days late on payment and will not return e-mails or take my calls.Am I correct to assume that since they have failed to adhere to the terms of payment they do not have the right to allow the retailer to use the images? If so can I request that the retailer remove the images from the website?The amount that they owe me does not warrant legal action. I have the feeling that the only way to encourage them to pay is to inform them that I intend to ask the retailer to remove the images because the vendor has failed to pay for the images. Speaking of professional photographers, can we take a moment to digress about one of our favorite shutterbugs (and full disclosure - a former client)? He's Bobby Neel Adams and he's great (we've got a print of the photo, above, in our office). It's from a strangely upbeat series of Adams photos of landmine victims called Broken Wings. We could go on and on but just check out his work.
Right, you had a question. You may consider this as bad news, but -- assuming you have entered into an enforceable contract with the customer -- it would be improper for you to ask the retailer to remove the photos. You could only do that if the use was unauthorized. In this case, the use apparently was authorized -- you just haven't been paid for it. If the contract was fraudulently induced and the contract was rescinded (as explained in this case), you could proceed as an infringement action. But it's usually much more difficult to prove fraudulent inducement (the other party never intended to pay you) than to prove contract breach (the other party delayed paying you). Typically, in situations such as yours (and in this case and this case), your remedy is to sue the customer for breach of contract. That may sound wrong to you. After all, if you haven't been paid how can they use your images? So what's a photographer to do?
Some options. The gang over at PhotoAttorney state that it's possible to insert language into a contract that would permit an infringement lawsuit if payment is not received. The language indicates that no rights can be exercised until payment is received and that any such uses will be considered willful infringements. (The crew at ASMP supports a similar position.) We think the provision could be improved by adding a statement to the effect that, "In the event that rights are granted prior to payment to photographer, this contract shall be automatically rescinded." We can't guarantee the enforceability of the provision (because a court is the ultimate authority on whether a contract is rescinded), but it should come closer to meeting the standards explained in the cases cited above. BTW, you may want to check out our answer to a similar photo question.

But Wait ... There's More ...

2012-01-13T17:22:00.000-08:00

We just noticed that Amazon is having a $16 special on Patent, Copyright and Trademark,our IP desk reference. That's probably because a new edition is coming out in a couple of months. Still, that's a pretty good deal. And speaking of good deals, Amazon Prime members can currently get a free Kindle version of our trade secret book, Protect Your Trade Secrets (as well as our new YA novel, I Didn't Kill Your Cat).

John Does, ISPs and File-Sharing Lawsuits

2012-01-13T06:00:00.000-08:00

Dear Rich: What does it mean to get a notice from an ISP saying that you've been named as a John Doe in a copyright lawsuit? Does that mean you've been sued or not? In court proceedings, the names John Doe or Jane Doe -- or John or Jane Roe -- are used as legal placeholders (scroll down) for various reasons. Sometimes they are used to protect the identity of the person bringing the lawsuit -- for example, as in the landmark Supreme Court case, Roe v. Wade. In copyright litigation, Doe defendants are commonly used because the copyright owner wants to file the lawsuit but doesn't know the identity of all the parties. For example, if a record company wants to pursue various file-sharing infringers, they may only have the IP addresses of the computers but not the names of the people who own those computers. The copyright owner files the lawsuit naming "DOES 1 to 100," and then seeks the identities of the Doe defendants from the Internet Service Provider (ISP). The ISP then notifies the individual users and usually informs the user that the ISP will reveal the identity as required under the user agreement, or per a court order, or subpoena. In order to enforce the claim or judgment against you, the copyright owner will eventually have to swap your name in for one of the John Does. Until that happens, you're not "officially" in the lawsuit. But that doesn't mean you're off the hook. If you got a notice from your ISP, you should review this article, and consider consulting an attorney promptly. If you don't do anything, the copyright owner may obtain your identity, and then obtain a default judgment against you. That could be painful.

Can I Reproduce Images From Gray's Anatomy?

2012-01-12T06:00:00.000-08:00

[REVISED 1/13/2012 -- Please see comment posted below]
Dear Rich: I am trying to get through the murky waters regarding what constitutes public domain. I design patient education fliers for many different departments in a medium-sized hospital. We are having trouble getting permission from most medical illustration resources to create these materials with external illustration without going way over budget. The problem being we can't offset the cost of purchasing the usage rights for patient materials since we're not selling these images -- we're giving them out free as a much needed service. I have found a site called Bartleby.com and they have a huge number of wonderful illustrations from the original 1918 printing of Gray’s Anatomy of the Human Body that I can use for these materials. The pitfall is our research librarians aren't certain if we are allowed to utilize any of the online imagery since it's saying the company renewed the copyright in 2000. If I use the reproduced 1918 digitized illustrations from the Bartleby site am I violating any copyright? Or am I well within the public domain period to use these images without permission or attribution? First of all thanks so much for asking about Gray's Anatomy because that allows us to put the book title into our header which may fool alternate-spelling Internet searchers seeking information about the popular TV show (Grey's Anatomy). We're not sure if that's a deceptive business practice (class action attorneys take note), but we hope that it is. We need to do something to jumpstart our Blawgsearch rankings. Also, we hope you don't mind that we cut 212 words from your question. That gives us more space to blather on and hopefully will keep our bounce rate down.
Right, you had a question. Good news. Copy all you want from the 20th edition of Gray's Anatomy. You're free to copy it from Bartleby.com (we discuss their terms of use, below), or if you're uncomfortable with that, use any of the 1247 graphic plates from the book that have been digitized and posted at the Wikimedia site. When you click on any image there, you'll see an expanded reproduction and this tag on the bottom of the page.

This faithful reproduction of a lithograph plate from Gray's Anatomy, a two-dimensional work of art, is not copyrightable in the U.S. as per Bridgeman Art Library v. Corel Corp. ...

What's that mean? It means that the original image in the book is in the public domain in the U.S. and that slavish digitized reproductions (exact copies) are also in the public domain, per the Bridgeman case. Because you're only asking about print rights in the U.S., we don't address worldwide rights (and we are not sure that you can rely on Wikimedia's conclusions regarding worldwide use, as well. You'd be better off consulting Steve Fishman's Public Domain book.
What about the terms of use at Bartleby.com? Bartleby.com's terms of use claims, "All materials published and provided on the [site] are protected by copyright ..." That kind of wishful thinking is popular at a lot of sites that publish public domain works. It's true that the 21st through the 30th editions of Gray's Anatomy are protected, but the 20th edition published in 1918 -- the one featured at Bartleby.com -- is safely in the PD. Unless the site has done something original to the works, for example, added distinctive coloring and titles, there is no claim the site can make to the images.
P.S. Dept. We recently answered a similar question and provided more detail about the public domain.

Must Ex-Employee Disclose Post-Employment Inventions?

2012-01-11T06:00:00.000-08:00

Dear Rich: Can an employer in California require an ex-employee to disclose all inventions created after the employment has ended. I've been asked to sign an agreement that requires me to disclose all inventions I create even for a year after I leave the company? The Dear Rich Staff is always fascinated by post-termination provisions. Yes, they are usually insidious, over-reaching, poorly drafted, and a desperate attempt to assert control by the legal-capitalist puppet-masters. But there's also an element of hopefulness to them. After all the employer sees some kind of future for you. So, when you get that call from the HR department and you start to see pink, remember that the employer who is about to end your career also has enough faith in you to pursue you for months after you've cleaned out your desk.
Right, you had a question. We can't say for sure whether your post-termination clause is enforceable but we can give you some background. California's Labor Code Secs. 2870-72 sets the rules for some invention disclosures. That law prohibits the employer from claiming rights to inventions you create on your own time with your own supplies and equipment. It also permits an employer to require employee disclosures of all inventions created during the course of employment. Unfortunately, it doesn't say anything about disclosures made after employment is terminated.
Two cases that shed a little light. In a 2006 case, STMicroelectronics v. Harari, a federal court indicated that California's disclosure requirements could be construed broadly for purposes of protecting an employer's trade secrets (although it didn't specifically address post-termination provisions.) In Yield Dynamics v. Tea Systems, a California Court of Appeal looked at a post-termination disclosure and ruled that an ex-employee had honored it. Again, the court didn't specifically address whether such clauses are always enforceable.
California policy. We think that a California court will consider it unenforceable if the provision is primarily being used as a means of preventing you from competing (that is, like a noncompetition clause). If a court considers it as a legitimate attempt by the employer to preserve company trade secrets, it is more likely to be enforced. The factors that are likely to tip the decision are the length of the provision (generally the longer, the less enforceable), the industry, or category of technology or invention involved (in some industries such as high-tech, trade secrets are short-lived), and the relative behavior of the parties (for example, it would be less enforceable if the employer customarily uses this provision to hassle ex-employees). We also think this is something you should make your new employer aware of as you want to avoid disclosing any newly acquired trade secrets. It's also the kind of thing you may want to consider hiring an attorney for an opinion.

Can I Copy Craigslist Ads?

2012-01-10T06:00:00.000-08:00

Dear Rich: I am a book editor working on a collection of some fiction, some personal narratives, some nonfiction. I've asked one writer to rewrite a personal narrative because it included four lines from a fairly recent pop song (or get permission to use the lines though I warned her that there would probably be a pretty stiff fee and the publisher wouldn't pay it). She wants to submit a different narrative instead that quotes several Craigslist ads. Are those ads considered to be copyrighted? Would we contact Craigslist? Or try to contact the author of the post? We rarely use Craigslist (except to check houseboat prices and obscure audio equipment) but we have a fond spot in our heart for the site because we used to live in the Sunset District of San Francisco and we remember riding our bicycle by the tiny storefront office at 9th and Judah Streets many, many years ago and wondering what the heck is Craig’s List? Then – boom – it was a global phenomenon.
Right, you had a question. Craigslist doesn't claim the copyright on individual posts (see the Craigslist terms of use -- scroll down to Section 14, Proprietary Rights). Craigslist does claim a copyright (collective works) in the cumulative content on its site, but that’s primarily to stop others from scraping and reposting large chunks of its content.
So is there a copyright and if so, who owns it? Under copyright law, the author of the work (the Craigslist ad) claims copyright. But that presumes the posting is a copyrightable work and it's not always clear if that's true. We think the determination depends on the ad's length and the unique language used in the ad. As a general rule short phrases, or “stock” advertising terms are not protected under copyright. And under a principle known as the merger doctrine (or idea/expression doctrine), a want-ad writer can’t claim copyright if the ways to express an ad are limited -- say “Roommate Wanted: No Meat Eaters, Please.” Even if a want-ad can be protected under copyright, the reproduction in a book might be excused as a fair use (or as a de minimis, or “trivial” use of the material).
Conclusion Dept. As general rule, if you are simply quoting a few Craigslist ads in a personal narrative – and particularly if you are using those excerpts for purposes of commentary or criticism -- you can probably exercise your rights under fair use.
The music thing. Because you didn’t ask, we'll sidestep your comments about reproducing four lines from a pop song. But if we were a betting blog, we’d bet that most such uses in a personal narrative would be excused as a fair use.

My Book Uses Paparazzi Photos

2012-01-09T06:00:00.000-08:00

Dear Rich: Was lucky enough to be offered a book deal by a major trade publisher. The publisher intends to publish my book in both electronic and print format and sell it to all the major book retailers that still exist. The book is to include tons of paparazzi-esque celebrity photos and wanted to know how to go about this legally. Do I have to get permission to use each and every one from the photographer? Are there services that do this in batches? Are there any fair use of public domain instances I should be aware of? Because you mentioned the word "paparazzi," we must take a moment to honor Federico Fellini, whose film, La Dolce Vita (how did Anita Ekberg get that kitten to stay on her head?), introduced the character, Paparazzo, a photographer. That eventually led to the generic use of the term paparazzi, for annoying celebrity photographers.
Right, you had a question. As annoying as such photographers may be, they are still entitled to copyright for the photographs they take (though those copyrights are often sold to celebrity mags, licensing agencies, and TV shows). There are agents and photo reps who can acquire rights for you -- for example, the American Society of Picture Professionals can set you up with a photo researcher. But the costs for such experts may be cost prohibitive. You may find it easier to use licensing services such as PRPhotos.com. For example, we sought to license an image of Brad Pitt for use inside the first edition of a book and could have acquired the license for $200 (see below).

Again, that may seem prohibitive for many but we're afraid that's typical for licensing photos for print purposes.
Fair use and public domain. As for fair use and public domain issues, we don't think you're likely to have much luck with either claims. Fair use is a defense which means you and the publisher have been dragged into a dispute. That's not a good position for an author, particularly if your contract has established that you'll indemnify the publisher. As for the public domain, it's unlikely celebrity photos are in the public domain unless: (1) the photographer donated it to the public domain, (2) the photo was taken by a federal employee within the scope of employment (think of Nixon shaking hands with Elvis), or (3) the photo was published before 1923 (Will Rogers, anyone?).
Creative commons. You may want to look for celebrity photos that are offered under Creative Commons licenses. Finding these photos requires some search engine chops but it can be done. Note that many celeb photos are illegally posted on the web and the interloper labels them as Creative Commons, so unfortunately, you can't always count on the labeling; you need to go to the source, for example, the photographer's Flickr site.

Can I Use Ex-Employer's Customer List?

2012-01-06T06:00:00.000-08:00

Dear Rich: Simple question: Can my ex-employer stop me from using the customer list I developed when I worked for him? Sorry, but it's not that simple. You should check out this article to determine whether your customer list qualifies as a trade secret. If it doesn't, it's unlikely that it can be protected by state trade secret law or an NDA you may have signed. On the other hand, state laws vary and most states honor noncompete agreements (not California) which may affect your ability to compete against your ex-employer by soliciting his clients. So, if you signed paperwork with your ex-boss, now's the time time to review it (or have an attorney review it).

Somebody Took My Dot-Org

2012-01-05T06:00:00.000-08:00

Dear Rich: A company has copied our domain name but used it with a dot-org, not dot-com like we do. I thought you had to be a nonprofit organization to get a dot-org domain name. Can anybody be a dot-org? The Dear Rich Staff is sorry to hear that you are no longer the master of your domain ... and yes, anybody can be a dot-org.
The skinny on TLDS. When top level domain names (TLDs) such as .com, .org, .gov, .net, and .edu were created by the Internet Corporation for Assigned Names and Numbers (ICANN), the intention was that each TLD would cater to a specific type of domain name holder. For example, .org was intended for nonprofits, and .net for network related entities. But only some TLDs are really restricted--for example, .edu for educational institutions, .gov for government agencies, and .mil for military agencies. To get one of these you must qualify. But that’s not the case with .org, .net, and .com. all of which can be obtained freely by just about anyone, for any purpose.
What can you do about the interloper? If someone has taken your company’s trademark and is using it in bad faith to compete against your business as a .org, you can either sue for cybersquatting in U.S. federal court (very expensive), or you can request ICANN arbitration (approximately $1500 if you use only one arbitrator). We discussed cybersquatting in a recent post.
P.S. Coming Soon: Custom TLDs. ICANN has announced that companies can – commencing January 12, 2012 -- buy custom TLDS. For example, Nike can buy exclusive rights to .NIKE and Apple can buy .APPLE. Supposedly these custom domains will sell for $185,000, so it's for serious players only.

Can We Use Cars in CD Cover Art or Movie?

2012-01-04T06:00:00.000-08:00

Dear Rich: On music CDs and in the movies I see images of different kinds of cars, and I wonder if the artist has had to pay any royalty to the car manufacturer. For example, the Beatle's Abbey Road album has a white Volkswagen Beetle right behind George Harrison. Does this imply endorsement of Beatle's music by Volkswagen Motor Company? And remember Walt Disney's use of a Volkswagen in the movie, The Love Bug. There are many classic old Fords and Chevys seen in movies all the time. Also, there is a musical group called REO Speedwagon. Using a car's image or trademark may (or may not) trigger problems on a CD cover or in a movie ... it depends on a few factors.
The Abbey Road Cover. The image of a VW on the Abbey Road cover (above) is unlikely to trigger any trademark issues because the usage is primarily editorial -- that is, it's an incidental use and no particular attention is drawn to the car. Of course, at the time, fans saw hidden meanings in the presence of the car (Beetle = Beatle) but it turns out the car was simply a vehicle owned by someone in a nearby flat. (BTW, the license of the car was stolen soon after the album came out). If consumers were likely to be confused into thinking that Volkswagen (or any other car manufacturer whose vehicle appears on the street) endorsed the Beatles (or vice versa), the car company never saw fit to take action. After all, if the world's most popular band at the time is including your product on a popular album, that's not something you're likely to complain about. (In general, it was a less litigious world back in 1970.) BTW, an editorial use of a trademark -- for example, a picture of a Ford truck in a documentary about trucks -- is not infringing.
Herbie and VW Marks. As for Herbie and the Love Bug movies, Disney removed the name and logos (scroll down) from Herbie in the first movie in the series. Apparently the company was concerned about claims of trademark infringement. But several years later when the sequel appeared (Herbie Rides Again) in 1974, VW sales were down and the VW company insisted that Disney put the trademarks and names back. (The names and marks stayed on Herbie for the subsequent four Love Bug sequels.)

REO Speedwagon. The band, REO Speedwagon, was able to get away with using the name and logo of the REO Speed Wagon company probably because the auto company had likely abandoned any claims to the mark when it ceased production in 1936 (or some time in the later 1940s -- we're not sure) or perhaps when the later owners of the REO Motor Company declared bankruptcy in the early 1970s. An abandoned mark is free for anyone to use, although ceasing production of an automobile is not always a clear sign as to the status of the mark.
As a general rule, you want to avoid making people think the car company is affiliated or endorses your product or service -- for example, calling your band Miata -- or diluting a famous mark by tarnishing its reputation in a commercial context. However, we also note that there's plenty of leeway in these standards as the Caterpillar company found out when they tried unsuccessfully to prevent the use of their villainous tractors in a George of the Jungle movie.

Will Disclosure Docs Help Under First-to-File?

2012-01-03T06:00:00.000-08:00

Dear Rich: Once the change is made to “First Inventor to File” under the America Invents Act, will the USPTO still accept filings of invention disclosure documents, as these would still be relevant and useful in derivation proceedings? Hey, welcome back everybody. It's 2012 and we're starting our fifth year of helping creative types answer pressing intellectual property questions. Sure, we never get selected for any "Best of" blog lists, and our Google Analytics are embarrassing, but hey, that's what happens when you're down in the trenches answering questions about Disney princess costumes, Miami Heat logos, and the copyrightability of reuben sandwich recipes. We're not sure how many zillions in dollars we've saved our readers in legal fees (or if we've actually saved anybody any money). But the important thing is that we think we're doing something worthwhile and so we continue on, paving a course that's punctuated by moments of unobscured clarity and unsuspected profundity. Did we say, "Welcome Back?"
Right, you had a question. Yes, disclosure documents might be helpful in the soon-to-come "derivation hearings" -- a process whereby the true creator of an invention is determined. However, if you are referring to the government's official Disclosure Document Program, that's been discontinued and so would not be available when first-to-file (and derivation hearings) kicks in on March 16, 2013. Patent it Yourself author David Pressman agrees with you that a record of conception and testing will be vital in a derivation proceeding, but in the absence of disclosure document filings, inventors will have to keep their own records. By the way, we've posted a series of articles on invention ownership issues at our Patents and Business site.

Does Provisional Trump Regular Patent Application?

2011-12-30T06:00:00.000-08:00

Dear Rich: Can you answer a question about provisional patent applications? We've invented an automobile accessory and we filed a provisional patent application. Then we filed a regular patent application. We recently learned that someone else has filed a regular patent application before ours (but after we filed our provisional). Do we lose the race because they filed a regular application before us? Under current patent law (first-to-invent) there is no race to the patent office. The issue is who invented the device first. That said, filing dates are important because they often reflect the date of invention (or constructive reduction to practice). Your filing of a provisional patent application, assuming it accurately reflects the invention in your regular application, can be used as prior art to stop a later inventor (or filer in this case) from obtaining a patent. In summary, if you wrote a good provisional patent application, you're probably the winner. This rule was demonstrated in a court case about a year ago. An inventor, Giacomini, filed a patent application claiming a method of selectively storing sets of electronic data. Another inventor, Tran, filed a patent application after Giacomini for a similar invention. However, Tran’s application was based on a provisional patent application that accurately described the invention and was filed before Giacomini’s application. In that case, the Federal Circuit held that Tran as “first inventor,” could claim patent rights and use his patent application as prior art against Giacomini. In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
Would the outcome be any different under the America Invents Act? On March 16, 2013, the U.S. switches to a first-to-file system. Under that system, the first inventor to file gets the patent. So, the outcome would likely be the same as your provisional patent application would be considered the first filing. Again, that's assuming your provisional patent application accurately reflected the invention claimed in your regular application.

Can I Reproduce Images From Crystal Bridges Museum?

2011-12-29T06:00:00.000-08:00

Dear Rich: I live near Crystal Bridges, America's newest art museum. Crystal Bridges is the brain child of Wal-Mart Heiress, Alice Walton and is a billion dollar museum. We here in Northwest Arkansas are so excited to have access, free access in fact, since the museum has been given an endowment by Wal-Mart that will allow the non profit museum to be forever free to the public, to see great American art from colonial times to the present. Many of these artworks are early works (pre 1923) and are part of the public domain. I have a new website I’m developing for public domain images. Crystal Bridges allows photographs to be taken of the art as long as a tripod or flash is not used. However, their photography policy states that photos of the art are only to be used for personal use. I take this to mean that they can not be used on my site which shares images with the whole wide web world. Am I correct in my assumption that they don’t have the right to restrict the use of my photographs of their public domain artworks? I am not trying to claim copyright of the photographs, since they will be merely reproductions of public domain works. Whether you can reproduce imagery that's in the public domain really depends on one thing: Did you enter into an agreement with the museum not to reproduce the images? You're probably thinking, "I didn't enter into any agreements with Crystal Bridges." But obtaining an admission ticket, if the ticket contains certain terms and conditions, may qualify as the type of agreement we're talking about. This may seem incredibly creepy -- to condition admission into the museum based on your promise not to reproduce public domain imagery -- but it's not uncommon in the copyright world and these so-called licenses are generally enforceable. Here's what public domain expert Steve Fishman has to say about the practice in his excellent public domain guide.

Many copyright experts believe that licensesimposing copyright-like restriction on howthe public may use public domain materialsshould be legally unenforceable. This isbecausethe federal copyright law preempts(overrides) state contract law and preventspeople from using contracts to create theirown private copyrights. Moreover, thereare sound policy reasons for holding suchlicenserestrictions unenforceable—theirwidespread use diminishes the public’saccessto the public domain.However, almost all courts have ignoredthe experts and enforced these licenses.

What's a valid license? To have a valid license, you and the museum must assent to the terms and conditions, typically at the time when you enter. If the admission ticket contains no restrictive provisions and you never assented knowingly to such conditions, there probably is no license in place. For example, it's unlikely that an after-the-fact assertion of rights -- a sign on the way out of the museum that tells you that you cannot reproduce the imagery -- is legally enforceable as a contractual license.
What about the Crystal Bridges website? Each page of images at the Crystal Bridges website contains the statement:

Works of art in Crystal Bridges' collection are protected by copyright and may not be used without permission. For more information visit Rights and Reproductions.

That sounds foreboding but we're not sure that statement creates a binding license. It reminds us more of a tip jar, left in view in the hopes that its presence will trigger a hoped-for result. The museum would have a much stronger argument that its terms and conditions are binding if the user had to assent to these terms and conditions -- that is, click a "Yes, I Agree" button to access the works. The fact that the site includes "copyrighted" photographs of public domain artworks also doesn't affect your ability to copy and reproduce that artwork. Courts have held that "slavish copying" of public domain works does not make the photographs protectible under copyright law. Although we're not a betting blog, if we had to bet, we'd place our money on the fact that currently public domain images at the site can be copied and reproduced without permission.
One last thing. Just because a painting was created before 1923 doesn't mean it's in the public domain. It must have been published before 1923. You may be surprised to learn that displaying a painting in a museum, for example, does not amount to publication. Publication (scroll down) refers to reproduction of the image, for example in a magazine, post card, or book. To learn more about these tricky public domain rules, check out Fishman's tome.
One other last thing. We're not encouraging you to get chased by the museum and we appreciate the fact that great art is being made available to the masses at no charge. But is it really free? The driving force behind these efforts to restrict reproduction is a desire to jack up gift shop sales and generate licensing revenue. We hope the museum rethinks its desire to reclaim and restrict rights to artwork that our government has designated to be freely available to the public.

Can I Use Artwork Created from Coloring Books?

2011-12-28T06:00:00.000-08:00

Dear Rich: My daughter, who has Down syndrome, loves to color design coloring books such as Ruth Heller's Designs for Coloring. She has a good eye for color and puts hours into each picture. She would like to submit her work to a book compiled by Woodbine Publishers about Down syndrome artists. Is she allowed to? We think you should try to get permission first. Assuming you can get in touch with the copyright owners, we believe they are likely to grant permission. We think that because the reproduction won't harm their sales, it's the right thing to do, and it's good public relations. If you can't get permission, we think you can probably get away reproducing the imagery without permission (though we can't guarantee that result).
How do you get permission? The copyright is likely held by the Ruth Heller Trust Fund but we think the place to start your request is with Grosset and Dunlap/Penguin Putnam Books for Young Readers, the publisher. They have an online permission system and a set of FAQs explaining the process and their online database indicates they control about a dozen Ruth Heller books. If the coloring book you are using is not covered, perhaps G&P can lead you to the proper source or to the trust.
Can you use it without permission? We think including one or two images (with proper attribution) would probably not trigger a cease and desist letter. Although the copyright pages of the coloring books don't specifically grant permission for uses like yours, a coloring book is an implied invitation to create a derivative work. It can also probably be argued that the sale of a coloring book implies a limited right to post and reproduce the resulting "colored-in" works. And for what it's worth, the company has not objected to the posting of colored-in versions of their imagery at Amazon. Again, we can't guarantee that the copyright owner won't object to your use, but it's difficult to imagine that they would.

Making Merchandise from Video Game Characters

2011-12-26T06:00:00.000-08:00

Dear Rich: For a while I have been making digital merchandise based off of famous movie and video game characters. At first I wasn't really making any money off of them. I know now that not making a profit doesn't change anything as far as trademark violations, but I thought it did before, so I stopped selling the merchandise a while ago because I had started making real money and didn't want to make money off of other people's creations without their permission. But now, after so many months, I find myself still wanting to make and sell that merchandise, and other people are asking me to as well. Its a bit frustrating, because I see other people creating things based off of trademarked characters, both in my market and in other markets on the internet. Like all of the Star Trek merchandise you see on Etsy. What's the likelihood of a small one-person business like me getting permission to create merchandise like this? If it's possible, how do I do it? The likelihood of getting permission is very slim. Owners of video game characters usually only deal with established merchandisers (with serious sales voodoo). Also, they often enter into exclusive licenses. That means they can't grant permission to you without violating their license with someone else. It's possible that if you were offering a new product category, you might have a chance. But that's tough to pull off. (PS. Here's the lowdown on trademark licensing.)
How do other people get away with it? It's a matter of odds. The owners of valuable character properties usually put their resources into pursuing the bigger fish, and for the most part, that often bypasses individual sales at Etsy or eBay. So, unless the trademark owner is intending to make an example of a small fry infringer, a cease and desist letter may be sent, and that's sometimes the end of it.
What should you do? We wish it wasn't frustrating to get permission. Like, wouldn't it be great if you could pay "per impression" for reproductions of licensed characters. Of course, that may blow any standards of quality ... but hey, merchandise happens. Anyway, infringement is always a gamble and we'll leave the risk assessment to you.

Snafu Caused Loss of Domain Name: Now What?

2011-12-23T06:00:00.000-08:00

Dear Rich: I had a URL (domain name), connected to a network of 3 sites. Due to an email account error, the registration was lost. The day it went public and I found out it got bought. I have been running the domain name for a mortgage network and I've owned this site since 2004. I noticed the place-holder page put up for the domain is for a company that is in the Cayman Islands so I am sure it is a crook who bought it for cybersquatting or to steal it. I have sent the company a letter saying they must release it or they will get a cease and desist and I will file with ICANN. What are my rights, what can I do? We're sorry to hear about your domain name loss. Apparently there are companies out there who wait for domain names to expire and then snap them up. Sometimes, the purchase is made in order to sell it back to the previous owner (who is often unaware that the domain has even expired). Sometimes, it's purchased because the new buyer believes that the domain still has some SEO value and so, it can be sold to a third party who can milk it for a few percentage points in Google Analytics.
Is it cybersquatting? Cybersquatting is when someone buys and sells a domain name with the bad faith intent to profit from another company's trademark. (We explain it in more detail, here.) For example, it would likely be cybersquatting if (1) the company set up a site that diverted your customers, (2) the company, in advertising the domain name for sale, mentioned that the potential buyer could trade off your previous traffic, or (3) the company set up a page with Google Ads listing you and your competitors. If the company contacted you, unsolicited, after buying the domain and offered to sell it back to you at a much higher price, that would likely be cybersquatting, too. It would not be cybersquatting if the company set up a non-competitive site for another company or if the company did nothing but set up a blank page. That's because there's no proof of bad faith intent. After all, it's not illegal to simply buy and sell domain names (without bad faith).
Should you proceed to ICANN? You are unlikely to get the domain name back by sending threatening letters. Most domain name dealers are not cowed by legal letters. They know you can only get the domain name back by (1) filing a federal cybersquatting lawsuit (probably way too expensive for you), or (2) by seeking domain name arbitration at ICANN. If you go the ICANN route, your filing expenses are, at minimum, $1500. It takes six months, requires a considerable amount of paperwork and documentation and may cost more if lawyers are involved. Remember, it's not enough to say that the company bought your domain name, you need to prove bad faith. And of course, there's no guarantee you'll prevail (although complaining parties prevail in 84% of the cases). Many people don't want the wait or the uncertainty of ICANN so they simply contact the new owners and pay for the domain name -- often forking over a sum between $2,000 and $3,000 because that's how much they would likely end up paying in time and money for an ICANN arbitration.

Can We Use European Poster?

2011-12-22T06:00:00.000-08:00

Dear Rich: I am an author in the process of publishing a book about modern day Europe. There is a poster (left) which was issued years ago by the Council of Europe, with a slogan which says "Many Tongues One Voice." We would really like to include this in our book but the publisher says we must first get permission from the Council of Europe since the poster is copyrighted. Could you advise as to the proper procedure to get this done? In case you're not aware, there are many who believe that Satan had a hand in the creation of this poster. We don't know if that contribution rises to co-authorship but we sure wouldn't want to run up against the Evil One in a federal court case.
Right, you had a question. The typical procedure for getting permission would be to contact the apparent owner of rights -- the Council of Europe -- and to ask for permission. Here's their contact information. Although the Council of Europe is a multinational organization -- a bit like the United Nations -- it can retain copyrights. For example, the Council of Europe is listed as copyright claimant for seven U.S. copyrights (although there is no registration for the poster). You can review their U.S. copyrights by searching at the Copyright Office. Click "Search the Catalog" and filter your search by "Name." If you can't get a response for your requests, document your attempts in the event that you decide to claim fair use. As we've indicated before, there are a line of cases that make thumbnail reproductions, whether in books or on the web, more likely to be excused as a fair use, especially when accompanied by commentary or criticism.

Does the VEOH Case Affect My Website?

2011-12-21T06:00:00.000-08:00

Dear Rich: We're a web startup (a pre-startup, actually). Can you explain the effect of the recent VEOH ruling regarding website infringement? Wow, a pre-startup! That sounds hopeful!
The case you're referring to -- UMG Recordings v. Shelter Capital, Partners -- has to do with the level of policing required by a website when users post infringing content. Veoh, a site that permits users to upload video content, was sued by Universal Music, after infringing videos were discovered on the site. Veoh had complied with all requests to remove content and had used software to seek out and identify infringing content, but some infringing music videos still made it on to the site.
DMCA as a shield. Universal argued that Veoh (our source for the kitty video) must have known of the "apparent" infringements and should not be able to use the Digital Millenium Copyright Act (scroll down) as a shield. The 9th Circuit Court of Appeals -- the first appeals court to rule on this issue -- held that the burden was on Universal to report the infringements to Veoh, stating,"Copyright holders know precisely what materials they own, and thus are better able to identify infringing copies than service providers likeVeoh." The ruling doesn't shield websites from liability for infringement but it does permit websites to use the DMCA as a shield when the website has anti-infringement policies and has otherwise responded to all requests for takedowns.

Does Filing For Patent End NDA?

2011-12-20T06:00:00.000-08:00

Dear Rich: If company A and company B have both signed a legal nondisclosure agreement (NDA) and then company A applies for a patent on the business plan covered in the NDA, does that make the information public and therefore make the NDA null and void? Information in a patent application becomes public when the USPTO publishes an application 18 months after filing. If the applicant does not plan on filing in foreign countries, the applicant can opt out of the 18-month publication program. If the applicant has opted out, the application will only become public if the application issues (or the applicant changes position on foreign filing). (We've discussed that previously, here.)
What happens after publication. Whenever the information is published, that information can no longer be protected as a trade secret and will not be subject to an NDA. That doesn't necessarily make your NDA "null and void." If other nonpublished information has been included as part of the NDA, that should still be protected. For more on the subject, check out our NDA site.

Can We Report Neighbor for Blasting Copyrighted Christmas Music?

2011-12-16T06:00:00.000-08:00

Dear Rich: Every year, my neighbor blasts Christmas music (and some non-Christmas music) with a synchronized Christmas light show. As you can imagine he goes overboard and drives most of the neighbors crazy. We've asked him to turn it down (or off), complained to the authorities, and none of it does much good. We're thinking of suing him as a nuisance. One of the neighbors wondered if we could report him for playing copyrighted music without permission. Is that possible? To whom do we report it? That's the Christmas spirit! We can totally relate. We once visited a Dear Rich Staff member in the hospital at Christmas time and somebody down the hall was blasting 'Silent Night' on a toy piano (talk about an oxymoronic choice of material). What is a 'humbug,' anyway?
Right, you had a question. The neighborhood blasting of copyrighted music would likely qualify as a public performance (sidebar on right) under U.S. copyright law. In other words, it falls into the same category as playing music at a ballgame or at a bar, and requires permission. If it is done without permission, it would be considered an unauthorized use of the music -- that is, an infringement. The gatekeepers for almost all of these public performance rights are two organizations, BMI and ASCAP. They grant permissions on behalf of thousands of songwriters. They also enforce rights and sue organizations and individuals who publicly perform music without permission. You could report your neighbor to the appropriate organization although you would need to identify the copyrighted songs from the performing rights organization's repertoire -- for example, BMI has over 7,000 registered songs with the word "Christmas" in the title. The organization could then choose to enforce rights. That's where you might run into a problem. Following the strange flap over the Girl Scouts/Macarena debacle, performing rights societies might be gun-shy about going after a homeowner playing Christmas music in his cul-de-sac. We think you and your neighbors would be better served by handling this in the traditional American way -- small claims court.

What's the Meaning of "Relationships" Clause in Contract?

2011-12-15T06:00:00.000-08:00

Dear Rich: I was reading the basic NDA on your website and I'm unsure of one clause you included. "5. Relationships. Nothing contained in this Agreement shall be deemed to constitute either party a partner, joint venturer or employee of the other party for any purpose." This is a confusing statement. Would you be able to explain what this means? Any help would be appreciated. Thanks! If you were reviewing an NDA at our NDAsforFree.com site, then the explanation should have been available to you by clicking on the hyperlink for "Relationships." If you were unable to access it, here's an explanation below. (Note that this clause is also sometimes referred to as a "No Joint Venture" clause, too.)

Your relationship with the receiving party is usually defined by the agreement that you are signing -- for example an employment, licensing or investment agreement. To an outsider, it may appear that you have a different relationship, such as a partnership or joint venture. It's possible that an unscrupulous business will try to capitalize on this appearance and make a third-party deal. That is, the receiving party may claim to be your partner to obtain a benefit from a distributor or sublicensee. To avoid liability for such a situation, most agreements include a provision like this one, disclaiming any relationship other than that defined in the agreement. We recommend that you include such a provision and take care to tailor it to the agreement. For example, if you are incorporating the NDA provision in an employment agreement, you would delete the reference to employees. If you are using it in a partnership agreement, take out the reference to partners, and so forth.

Can a Legal Notice Be Sent By Email?

2011-12-14T06:00:00.000-08:00

Dear Rich: I got a cease and desist notice by email. Is that legal? How can they prove that I got it? Yes, a cease and desist letter has the same legal effect whether it is sent by U.S. mail, email, or as a text message. The two laws that confirm the acceptability of electronic notices are “UETA” (the Uniform Electronic Transactions Act), adopted in all states except Georgia, Illinois, New York and Washington, and “ESIGN” (Electronic Signatures In Global and National Commerce Act), a federal law. Unless some other law prohibits it, UETA and ESIGN permit the use of typical electronic notices. Put another way, under both of these laws, a legal notice cannot be denied admission in court simply because it is electronic (and not on paper). The key to admission in these cases is demonstrating authenticity of the email and receipt. So, if a lawyer sends you an email cease and desist notice, under UETA, that email is considered to have been “received” when your email server (the one connected with the your email account) receives the message from the lawyer. The email protocol used when sending email over the Internet confirms your address. However, demonstrating receipt may require discovery mechanisms to obtain your email server records. Note, that you are considered to have “received” the email even if it falls into your spam filter, provided that you have the ability to obtain the message from the filter or have control over the filter’s settings. Lawyer's often use a system such as RPost (http://www.rpost.com/) when sending electronic email notices.

How Do I Word a Copyright Disclaimer for YouTube?

2011-12-13T06:00:00.000-08:00

Dear Rich: I've seen a lot of different statements posted by people at YouTube so they won't get sued over copyright infringement. What is the best thing to write to prevent getting sued? These statements -- known in legal parlance as "disclaimers" -- are intended to prevent (or at least limit) copyright infringement claims. The most common of the half-million disclaimers used at YouTube is apparently "No Copyright Intended" which -- despite its ambiguous meaning -- is about as effective as going 90 MPH in your car with a sign that says "No Speeding Intended." Other disclaimers state that the user is claiming fair use. Unfortunately, claiming fair use doesn't mean that the work qualifies as a fair use. Only a court can determine that. In truth, we don't believe that there is really any disclaimer (scroll to bottom of page) that would be effective in preventing a lawsuit if your video infringes someone else's work.
So what do you say? Knowing that disclaimers won't prevent a lawsuit, you might be able to limit damages in a lawsuit by stating something to the effect of "No copyright is claimed in [content copied] and to the extent that material may appear to be infringed, I assert that such alleged infringement is permissible under fair use principles in U.S. copyright laws. If you believe material has been used in an unauthorized manner, please contact the poster." Don't expect this to do much -- most copyright owners will bypass this and have it removed under a DMCA notice -- but it may set a more sympathetic tone for you as a defendant if you find yourself responding to a lawsuit.

Can Yoga Moves Be Copyrighted?

2011-12-12T06:00:00.000-08:00

Dear Rich: I've been following the Bikram Yoga stories and it's still not clear to me. Can I practice Bikram Yoga techniques at my studio or will I get sued by the Bikram people? The jury is still out on the case you're discussing in which Bikram founder Bikram Choudhury sued a former Bikram practitioner who started a competing "hot yoga" school (Yoga To The People or "YTTP") for copyright and trademark infringement. We thought we answered a similar question a while back but we couldn't dig it up so we assume it was written in a parallel universe.
The copyright case(s). Bikram and his competitors have been in and of courtrooms over the past ten years. One group of yoga practitioners sought relief after Bikram sent out a bunch of cease and desist letters in approximately 2002 and 2003. That battle ended in a settlement in 2005 but not before a court weighed in on a few important issues. The court determined that: individual yoga moves could not be protected; a compilation of moves might be protected if sufficient originality could be demonstrated; even if a copyright were granted for a collection of moves, it would be a "thin copyright" and would likely be limited to performing the moves in the exact sequence; and the performance of yoga moves did not necessarily amount to their publication. As for the use of heat as part of the sequence -- and who wouldn't want to be in a yoga room packed with half-naked sweaty people -- no protection can be granted for this "concept." In September of this year, Bikram started up again, this time going after YTTP for copyright and trademark infringement. Bikram has received several copyrights for books and other compilations. However, the Copyright Office announced last week that yoga moves are not eligible for copyright protection. Bikram's lawyers discounted that decision as meaningless because Bikram's copyright has already issued and is presumed valid. It's true that there is a presumption of validity associated with a copyright registration but it's a rebuttable presumption and courts periodically eighty-six registrations when the situation calls for it. This may prove to be one of those situations.
Can you use the trademark? Probably, the strongest claim that Bikram can make is for trademark rights -- specifically as to the use of the name, Bikram Yoga. Bikram hasn't made the mistake of Pilates and permitted the unlicensed use of his name. So, if he can demonstrate that the Bikram marks (and we're not sure what is claimed beyond the name) have been used, he may be able to succeed on trademark infringement claims.
Can it be patented? We don't think a collection of yoga moves is patentable, an opinion shared by other patent practitioners and by the patent office, although it is possible to obtain patents on yoga products, like the yoga gloves and shoes, shown above). (And of course let's not make the sad journalistic mistake of confusing copyrights and patents.)
Bottom Line Dept. If we were a betting blog, we would bet that Bikram will fail in his current copyright case though we doubt if that will deter the celebrity attraction that is associated with his "brand." The takeaway point, however, is that, until stopped by a published court ruling, the company is likely to continue to aggressively "protect" its turf.

Will Negative Review of Art Reduce Permission Chances?

2011-12-09T06:00:00.000-08:00

Dear Rich: I'm writing an academic essay on art criticism and some artworks I criticize and others I say better things about. In looking for free copies of these images, how do I handle the galleries whose artists are coming under critique? Is it ethical to hide the fact that they won't come out so well? I feel far more comfortable asking for free copies of images from galleries and museums in which the artist comes out better. We know what you mean about that ethical thing. The Dear Rich Staff has worked as a reviewer and sometimes we feel funny panning somebody's work even if we didn't have to ask permission for anything. That's because we know how much effort went into the thing and we feel bad deflating the tires, so to speak. On the other hand, everybody's a reviewer these days so maybe reviews really don't matter any more.
Right, you had a question. Obviously your chances of obtaining permission are reduced if you inform the person from whom you're seeking permission that you intend to pan the artwork. So, our suggestion would be not to mention it. Like Admiral Hopper used to say, "It's easier to ask for forgiveness than it is to get permission." Though some may disagree with that approach, we feel it's fine in this situation. After all, academic criticism is valuable and is intended to provide benefits to the artist and the public. So, we see nothing wrong with simply stating that you are preparing an academic essay and need a high quality reproduction of the work for reproduction with your essay. If you cannot get permission and you are going to produce a printed publication, you may be able to reproduce thumbnails under fair use principles -- at least that's been the trend recently for books and websites. And of course, though it may be expensive, some artwork can be licensed with few questions asked through sources such as VAGA and ARSNY. (Columbia University has a site explaining the licensing principles of museums and galleries.) And while you're at it, we're curious what you think of this artwork?

Can We Do a Book About the Rolling Stones?

2011-12-08T06:00:00.000-08:00

Dear Rich: I am a small publisher with a writing background who wants to release an e-book covering the 50th anniversary of the Rolling Stones. I have asked many experts three questions: who is their favorite Rolling Stone? What is their favorite Rolling Stone song? and What is a memorable experience that they had regarding the Stones and their songs? I plan to publish the findings in a e-book and sell/release it for download. My questions are: (1) Do I have to ask the band's permission to release the book? (2) If the company decides to sell the book, do we have to compensate the Stones? (3) Am I okay to publish this if I dont include any copyrighted logos/materials etc in the publication? The Dear Rich Staff has decided that its favorite member of the Rolling Stones is Keith Richards because we loved his autobiography, he set the standard for all rock and roll guitar playing, and because if we find certain old pictures of him, he kind of reminds us of the way we wanted to look back in the day. (Of course, our second favorite Rolling Stone is Charlie Watts because he is the best dresser and drummer in rock and roll.) Our favorite Rolling Stones song is You've Got the Silver because Keef sings it but if you're looking for tracks that Mick sings, then it would be Wild Horses or Angie. Our most memorable and most depressing Rolling Stones experience was the so-called "Inflatable Penis" tour in 1975. We saw the show at Indiana University Convention Center and the setlist was awesome. But it was the first tour that the Stones used props on stage and we remember thinking at the time -- maybe it was the Hoosier audience, the awful sound mix, or maybe it was the sad use of the props -- that this was the end of rock and roll. And of course, we were correct about that.
Right, you had a question. If you don't use any copyrighted materials owned by the Stones -- lyrics, photographs, etc., -- then you won't need to ask permission or deal with compensation. If you do use some limited excerpts or clips, you may be able to excuse that use under fair use principles. For example, under U.S copyright law, you can probably get away with thumbnail reproductions of album covers as a fair use. You're probably fine to use Rolling Stones logos and trademarks because your uses are strictly information/editorial and permissible under trademark law. However, we think you are best avoiding the use of of logos (such as the logo reproduced above) on the cover of the book as that may imply endorsement by the Stones.

Can I Sell Sports App That Uses RSS Feed?

2011-12-07T06:00:00.000-08:00

Dear Rich: I've already made an app that feeds RSS feeds from SkySports and goal.com. The app informs people on the go about their football team. I'm about to change the app slightly and putting more work into it. I'm thinking about selling it for 1 pound. Would this be copyright infringement because I'm making a profit (or am I just feeding people the infomation from the direct source, that is, skysportsnews.com and goal.com)? Start by considering the two extremes of RSS feeds apps. On one end you have RSS reader apps like Xnews. These apps don't infringe because they are simply providing access to a variety of feeds. On the other end you may have a news app that pulls feeds from a few specific news sites and reproduces the material within the app. This is more likely to be copyright infringement because it is reproducing specific RSS feed content for readers, as well as trademark infringement because it is confusing consumers as to the source of the material. (BTW, we wrote about this issue about six months ago.) Your app seems to be somewhere in between these two extremes (and the fact that you are charging money doesn't affect the determination). The more you move away from the reader model where the user chooses the RSS feed and gets unadulterated content, and the more you hype the name of the company supplying the feed, the more likely you will run into problems. In your case, reproducing content from two specific feeds (whose trademarks are featured) could trigger a cease and desist letter.

What is a Registered Patent?

2011-12-06T06:00:00.000-08:00

Dear Rich: The company I requested to review my "pending patent" said I must first have a "registered patent" before they will review it. What is a "registered patent"? You either have a patent or you don't, so we think the term "registered patent" means that the company wants you to have one. If you're patent-pending, you don't have a patent. You've filed the appropriate paperwork but the USPTO has not approved your application. Some inventors mistakenly believe they have a patent after filing a provisional patent application (PPA). The PPA preserves your place in line at the USPTO and it may serve as a deterrent but it's not a patent. You cannot use a PPA to stop others from copying your invention, and it only has value if you file a regular patent application within one year of filing the PPA. Because less than half of patent pendings "matriculate," into patents, a lot of companies are wary of patent pending status.
(BTW, there's a lot of helpful patent business info at Nolo's new patents and business site.)

How Do I Protect My Doll?

2011-12-05T06:00:00.000-08:00

Dear Rich: I am the author of a childrens' book about a little girl. Per my requst, my illustrator made a doll that looks exactly like the character in my book. This book is the first in a series, by the way. My question is this: Do we need to obtain a trademark or copyright on the doll? I want to use the doll when I read the book at various places (it is a picture book for children ages 5 through 8). I have tried to research this myself, but it is confusing. Speaking of confusing, we're not sure what to make of the Bitty Baby doll and its accompanying diaper bag. Do other dolls come with their own doll? Is this the right message to send children about overpopulation? Is it the right name for a doll? We guess we'll never know.
Right, you had a question. Yes, you can protect your doll under copyright law. You can file an application electronically or by using the Form CO (PDF). You would register it as a work of the visual arts. Circular 40 explain the rules.
Did the illustrator assign rights to you? According to your question, the illustrator created your doll. That might make the illustrator the copyright owner. If you and the illustrator jointly developed the doll, you may be co-authors. In any case, it's probably in your best interest to get an assignment of copyright from the illustrator. (This Artist's eGuide includes one).
What about trademarks? You can register your doll's name with the USPTO. But you don't get federal rights until you've started selling the doll (although you can reserve rights). If money is tight -- trademark registration costs approximately $300 -- you can wait until sales from the doll justify filing the application.

Manufacturer Wants Invention But Not the Patent

2011-12-02T06:00:00.000-08:00

Dear Rich: I have your book, Profit From Your Idea, and I'm in licensing negotiations with a manufacturer. I created an invention that involves snowmobiles and portable cookers and it's currently patent pending in the U.S. and Canada. I proposed a deal whereby the manufacturer would advance me $7,000 most of it for patent prosecution costs, and a 7% royalty. However, the manufacturer responded that they do not see the value in a patent so they don't want to pay the $7000. They seem to want to avoid talking about patents in the contract (perhaps just to avoid the $7000 or perhaps for other reasons). Question 1: Can I legally make a contract without having patent pending (or other forms of intellectual property) to offer them? The advantage of selling them the 'idea' and not only the 'patent' is that we would continue to receive royalties if the patents do not issue. If they agree to this, is this an acceptable approach? I know for a fact that certain inventors do license without any IP (for novelty items for example). On the other hand, your book, and advice from David Pressman seems to argue that some sort of intellectual property must be exchanged for royalties (you can't just sell your 'idea'). Question 2: Let's assume we do license the 'idea' and the manufacturer sells a bunch of units. And let's say our patents do not issue because the idea has already been patented by a third-party. Can that third-party sue us directly for having sold an 'idea' to a manufacturer that we do not own? First of all, thanks a real, real, lot for buying our book. If you saw our recent Nielsen numbers you'd know why we're so grateful. Second, we hope you're being careful out there snowmobiling with burgers and wings frying in the back -- talk about distracted driving.
Right, you had a question. Yes, you can license without a patent. A lot of manufacturers don't want to mess with patents because they may believe that the key to success is getting to market first (and patents take years to obtain). Still, there are some obvious advantages to having a patent, in particular you have a monopoly on the invention and may be able to control derivative versions as well.
How do you describe what you're licensing? In your question you state that the invention is patent pending in the U.S. and Canada but then you ask whether you can license something that's not patent pending. So, we're not sure of the status of things. Either way -- patent pending or not -- is okay. In Chapter 8 of the book, we provide language for licensing a patent pending invention -- "The 'Property' refers to the invention(s)described in U.S. Patent Application No(s)._______, a copyof which is/are attached to this agreement." Following that we also provide language if the innovation is not patent-pending. In both cases, providing an accurate description of what you're licensing is most important.
Is it legally binding if I have no IP protection? It helps to be able to point to a patent or a trademark registration when licensing but not having a government registration doesn't preclude you from licensing an idea. The idea may involve trade secrets or know-how, or some other product of the mind, and the fact that a licensee is willing to pay for it indicates that it has property value. Ideas are commonly licensed in the toy and entertainment industry.
You're not licensing your patent, you're licensing your rights. If you make the deal and the patent doesn't issue, that shouldn't affect your arrangement unless the agreement specifically states that the license is contingent upon acquiring patent rights. For example, many license agreements set two standards of royalties: one if the patent issues; one if it doesn't. Because the licensee isn't interested in the patent, you shouldn't have language penalizing you if it doesn't get issued.
Yes, you can get sued if you infringe someone else's patent. Unless the manufacturer is willing to indemnify you (very rare), you can be sued for infringement. Usually, it's the other way around. The manufacturer wants you to indemnify them. Please read the section on Warranties and Indemnities in Chapter 12. If you must indemnify, we describe a system based on an incoming royalty fund in the book. See if you can get the licensee to accept that so you won't risk out-of-pocket payments.
P.S. We just redesigned a patent site that may provide some help for you.

Can We Paraphrase Three Paragraphs?

2011-12-01T06:00:00.000-08:00

Dear Rich: What is the rule on paraphrasing. I was told that it's okay to paraphrase articles from the web at our site if (1) the original work has been posted for more than a year and (2) only three paragraphs are paraphrased. I can't find anything about this rule on the Internet. That's because there is no such rule. The idea that paraphrasing always excuses infringement is one of the more popular copyright myths. We can't tell you the quantity of paraphrasing that's permissible but here are some cases to guide you:
The caselaw. In a 1974 case, a text book publisher took a popular child psychology book and hired a series of freelance writers each to rewrite the chapters of the book so the result was all paraphrasing. The writers were instructed to maintain the same sequencing of topics and weighting of subject material. A court found such massive copying to be an infringement. Another court later stated, “We recognize that even in the absence of closely similar language, courts have found copyright infringement on the basis of “recognizable paraphrases.” The Second Circuit Court of Appeals stated that infringement occurs when “an alleged infringer borrow[s] virtually an entire work and attempts to avoid liability by doing little more than changing the verbatim language or slight details in the structure.” But wait, there's more: Another 1970 case held that extensive paraphrasing amounts to infringement including the rewording of legal agreements, and in 1972, a court would not excuse extensive paraphrasing when the defendant rewrote a book about guitar playing.
Bottom line dept. Courts examine paraphrasing on a case by case basis. Don't assume that changing the words automatically absolves you from liability.

Family Named Business Can't Always Use Family Name

2011-11-30T06:00:00.000-08:00

Dear Rich: Our family has had a restaurant business since 2003 and recently we got a letter from a large chain asking us to change it because their lawyers say it is too similar to the chain's trademark. I don't know how they found out about us. We're a pretty small operation. Can they really make us change our restaurant's name? We're sorry to report that -- depending on the circumstances -- you may have to change your name. We've written an article on the subject of family names as trademarks so check that out, first. Assuming the chain has been using the name longer than you have, the wisest course is for you to hire a business lawyer to determine your response.
P.S. Speaking of restaurants, here's an adventurous desert we recently ordered at our local seafood shack -- Chocolate ganache wrapped in filo topped off with peanut butter sauce and hot fudge. It was great!

Wants to Quote Movie Dialogue in Novel

2011-11-29T06:00:00.000-08:00

Dear Rich: I don't see anything in your Getting Permission book on getting permission to quote dialog from films. I assume that the process is similar to getting permission to quote song lyrics, but it would be better if you covered this in detail. I want to quote with attribution some movie dialog in a novel I am writing. Any suggestions? Speaking of film dialogue, we were surprised recently when reading the French classic Pere Goriot to find a line about someone "making him an offer that he cannot refuse." Did Balzac travel to the 20th Century, watch the Godfather, return to the past and copy the movie dialogue for his novel? We guess we'll never know.
Right, you had a question. The rules for using film dialogue in a novel are the same as for all text uses (explained in Chapter 2 of the book). As you're probably aware, there is no fixed amount of words that you can use without permission, although some uses are so minimal as to be considered de minimis (scroll down). The difference with using film dialogue is that it's often difficult to figure who owns the rights and even harder to get permission for the use.
Why is it difficult to get permission for movie dialogue? Generally the studio (or a producer) owns all rights to the movie including the dialogue. But in some cases, screenwriters may retain rights. In other cases, if the movie were based upon a book, the author may retain certain rights. That's the challenge when using one layer from a multi-layered work -- determining who has the right to grant permission. Even if a studio does own the rights to the dialogue, you still have the practical problem of finding the person authorized to grant permission (and convincing that person not to hang up on you).
What's a novelist to do? If you're publishing the book yourself, you're probably less at risk because you won't be indemnifying against infringement. Publishers get uptight about stuff like that and insist on some security in the form of warranties and indemnity. On the other hand, a publisher may be able to assist you with getting rights and permissions from a studio. If you're on your own and you're still concerned about getting chased, consider whether you can make a realistic fair use claim. That is, can you demonstrate that your use of the dialog is transformative -- for example, Woody Allen's use of dialogue from Casablanca in Play It Again, Sam, was transformative (though Allen likely acquired permission for that and the film clips).
Speaking of great movie dialogue ... we're partial to Things Change (Don Ameche's swan song). It's got dialogue -- written by David Mamet and Shel Silverstein -- with some serious staying power.

Is My Publisher a Piracy-Denier?

2011-11-28T06:00:00.000-08:00

Dear Rich: I am a writer and my publisher recently sent out an email telling authors not to worry about illegal downloads. It makes me mad to see how easy it is to obtain free copies of my book. How do I tell whether piracy affects book sales? Gee, this is a tough one to answer for a few reasons: (1) Our bodies are still clogged with post-Thanksgiving metabolism-slowing leftovers. (2) Our books have been pirated so we may be too close to the issue to provide a balanced response. (3) When talking about piracy we're never sure which statistics to trust. (4) More importantly, we're not sure whether the statistics even exist currently to answer your question. In general, we don't think anyone really knows the answer, but here are some things to consider:

Using the music industry as a paradigm. One theory about illegal downloads is that the people who download them would not have bought the product in the first place. In other words, no sales are lost. Using that line of thinking, the 95% of international music fans who downloaded an illegal copy of the latest Katy Perry album would never have purchased it. Hmm. Even if that number is inflated by the music industry, it's hard to believe all these Katy Perry fans wouldn't pay for her recordings. Even a small conversion rate would double Katy's sales. Of course, book readers and music lovers are different types of consumers (like they say, we don't need to carry a copy of every book we like in our pocket) so analogizing to the music business may not be proper. But it's also possible that the book industry has not yet reached the same digital precipice (from which the music biz has already fallen).

Does DRM have an effect? Digital rights management (DRMs) built into all eBook readers probably doesn't have too much effect on piracy (and nor will SOPA, if passed). The train has left the station, so to speak.

What about surging eBook sales? It's true that eBook sales are rising dramatically. But that's a measurement of the popularity of iPad and Kindles and only partially counterbalances the disappearing physical book (and physical bookstores). As digital devices become the choice du jour for readers, piracy will probably have an increasing impact on eBooks (just as the popularity of MP3 players triggered the end for the music biz). More importantly, even if not directly, unauthorized digital downloads will be one of the indirect forces causing legitimate revenue to diminish (see below).

Where is the book industry headed? The content business is heading away not just from physical products, but from downloads too (both legal and illegal). The new model is to replace individual purchases with subscription/streaming services as exemplified by Spotify, Netflix, and Rdio. Of course, there will still be print books, but for the most part, consumers won't possess individual units of content; they will subscribe to a service that provides a content library. No doubt Amazon and Google will eventually drag us to library subscription models for books (though there are still piracy problems with that as well). But in any case, we may be headed for a world where all downloads, not just illegal downloads are irrelevant when offered a fulltime streaming/subscription model.

Check's in the mail dept. Alas, all of this digital transition doesn't bode well for author revenues (musicians, take a look at a Spotify accounting statement to see the diminishing profit margin). And that's why, as authors, we admire piracy-deniers like your publisher. We may not know for sure what those diminishing royalty checks mean, but denying that the end is coming allows us to still have a nice day!

Can Photographer Control Photos From Fashion Shoot?

2011-11-25T06:00:00.000-08:00

Dear Sir/Madam: I am a freelance photographer and I am also working on an upcoming online fashion magazine. Recently I organized a photo shoot with a few models I have founded via Internet and a designer who agreed for the models to wear his clothes for the photo shoot purposes. The designer refurbishes and sells branded clothes. Everyone agreed to the photo shoot on these terms:

Everyone gets the photos for their own usage
I will use the pictures however I want, and also the ones I choose will be featured in the online magazine
No fees charged on anyone including models, designer and myself

It's a verbal agreement with everyone and not written. It may not have any value in the eyes of law. Now however the designer (the person who allowed us to use his clothes for the shoot) is giving me trouble setting me deadlines and choosing the pictures I can use for the magazine or anywhere else. I want to use the photos that I want to use, the way I want to use them and whenever I want to. He claims it would be illegal if I used the photos anywhere without his permission and supervision. He hasn't got any photos from me yet so he can't use any either for his own purposes. I would like to know whether I am allowed to use the photos that I took that day, the way I want to and without any restrictions. Or would I have to at least mention his name or his shop's name? We haven’t signed any copyright releases etc. Also would I need to get the models release if I want to upload the pictures? I would like to add that the photos will be used for editorial purposes only and non-commercial. We're back with the "Dear Sir/Madam" that starts your letter. What prompted your uncertainty as to gender? Can Rich be used as a woman's name? There is a female equivalent for Richard -- Richelle (and we were excited to see that a Richard and a Richelle recently married). But we're not clear whether a woman writing this column would be addressed as Dear Richelle, or Dear Rich (or perhaps the more endearing Dear Richie). As a further digression, our research unearthed some surprising data regarding the number of serial killers named Richard.*
Right, you had a question. Unless there is a written document evidencing copyright transfer, you, as photographer own copyright in the photos. You control the reproduction and distribution and you're free to choose and reproduce the photos you want for your magazine. If the verbal agreement is enforceable -- that depends whether there is sufficient evidence to prove the terms and conditions -- you would have to abide by those terms, as well. Even if the verbal agreement is valid, it doesn't preclude you from doing what you want -- choosing the photos you wish to use in the magazine. (And you would be obligated to provide copies of the photos to the other parties.)
Do you need to mention the designer? We're not sure why you have to mention the designer or the designer's store, unless you're contractually bound to do so. The designer has no copyright in clothing design unless he's stitched in some unique artwork--for example, he's added intricate needlepoints. In any case, it might be a nice professional touch to credit the designer as fashion readers expect that information.
What about model releases? Releases are needed to head off two types of problems: invasion of privacy (you may be invading the model's privacy, for example, by showing her partially nude); or violation of the right of publicity (you're using the model's image to sell something). Typically, editorial non-commercial uses wouldn't trigger the right of publicity but with Google AdSense and similar Internet schemes, it's difficult these days to tell sometimes whether an image is being used for commercial exploitation.

*Serial killers named Richard: Richard Angelo - The Angel of Death, Richard Biegenwald - The Thrill Killer, Richard Chase - The Vampire of Sacramento, Richard Cottingham - The Torso Killer, Richard Macek - The Mad Biter, Richard Ramirez - The Night Stalker (and speaking of notorious killers, there's also Richard Loeb (of Leopold and Loeb infamy).

What is SOPA and Should I Care?

2011-11-22T06:00:00.000-08:00

Dear Rich: The web's buzzin about SOPA. Are you going to do a post about it? What's your opinion? The Stop Online Piracy Act (SOPA) comprises two distinct pieces of legislation (one awaiting a vote in the House and the other already passed in the Senate) that will need to be conformed. The legislation would enable the Department of Justice (or private parties) to "blockade" pirate sites outside U.S. jurisdiction by cutting them off from search engine results and AdSense revenue, among other things. The legislation has triggered a battle between content providers -- frustrated that they can't shut down rogue pirate movie, software, ebook, and music sites outside U.S. jurisdiction -- and content aggregators who are concerned that the broad language in the legislation would remove the safe harbors of the DMCA and make non-pirate sites (such as Yahoo, Flickr and Scribd) liable for infringement. Opponents are also concerned that SOPA will diminish investment, cause revenue losses, create unnecessary legal expenses, and send jobs overseas. (Similar arguments were made in the battle over "patent reform"). As with the DMCA, those who pursue infringers based on misrepresentations are liable for damages and attorney fees.
Will it pass? Surprisingly, for a Congress that can't seem to get traction on crucial national issues, the SOPA legislation has remarkable cross-party support and is expected to pass the House. The president is reportedly in favor of the legislation while vice-president Biden appears to be opposed. Among those legislators lined up against SOPA are Darrell Issa, Ron Paul, and Nancy Pelosi. (Copyright battles make for strange bedfellows -- remember when Justices Blackmun, Marshall, Powell, and Rehnquist united in their Betamax dissent?)
Cutting off AdSense. Do you wonder why SOPA includes a provision cutting off ad revenue from pirate sites? That's because ad revenue is often the only source of income for the folks who post illegal content. Think about it. How else can they earn money if they're giving away stuff for free?
What's our opinion? Although we are concerned about government injustice and intellectual property (check out this example of stifling innovation), our mission at Dear Rich HQ is to provide practical information that helps readers solve problems. So, we discourage the staff from presenting opinions. Other reasons why we don't have an opinion include:

it takes time to come up with a logical well-thought out opinion and we're already pretty busy.
in terms of human evolution, we're convinced our opinion doesn't matter
also, we're tired of everybody else's opinions (like they say, if I wanted your opinion, I'd give it you.)

What do we have an opinion about? We think Terrence Malick's Tree of Life would have been better without all that dinosaur stuff (although others differ).

Can We Sell Irish Street Art

2011-11-21T06:00:00.000-08:00

Dear Rich: The attached photo was taken in Dublin Ireland. Someone had added a little graffiti and the overall look was pretty cool so we took some photos. It was out on the street, no trespassing involved here. I’m wondering if we would be in the clear to publish a series of these photos to sell as open edition print reproductions? We agree; this is some pretty cool street art. As we've discussed before, art (unlike architecture) that's publicly viewable from the street is protected by the same copyright rules as art that is hanging within a museum. The only exception is that there might be a tendency for judges to be more liberal applying fair use rules. For example, reproduction of this image as one element in a Dublin street scene would probably be fine. But featuring the photo and selling individual prints would likely violate the artist's copyright (we assume the graffiti is not by the same artist and in any case, it is not protectible). We're not experts on Irish copyright law but from what we've read, it seems as if the same basic rules apply in Ireland as in the U.S. (We're also not sure whether the copyright holder is Irish (as Dublin attracts foreign street artists). But in any case, most countries including the U.S. are treaty partners meaning that foreign copyright holders can claim certain rights in the U.S. For all these reasons, resale of this artwork could make you an easy target for an infringement claim.

Examiner Objects to Facebook Game Trademark

2011-11-18T06:00:00.000-08:00

Dear Rich: I need to register a trademark, which is the title of a videogame that runs on the Facebook platform. The filing was made under IC041 (Entertainment services, namely, providing on-line computer games), but when I sent over a specimen (screenshots of the game featuring the title) I was told that such a game does not constitute a "service", but rather it constitutes "goods" (video game software), thus I should better restart the filing process under IC009 (Computer game software for use on mobile and cellular phones). Am I facing a hardball attorney or are the USPTO guys right and I should restart the process? We agree with the examiner. You would use Class 009 for registering the name for a game. (You would use 041 if you were registering a website that provides the game-related services, or if you were registering the name of the company that makes the game.) The best way to avoid problems in the future is to look up similar goods and see what classes were used for those marks (or check out our book for app developers). Use the basic Trademark Search and type in the name of a video game to see its classes. For example, scroll down to see the classes sought by the Angry Birds folks.
More places to search. To identify the class for your goods, you can also search the USPTO’s Acceptable Identification of Goods and Services Manual. From the Choose Field drop-down list, pick Class, and then type in a description – for example “video game”—into the Enter Search Terms field. The search results will tell you which class is recommended. Another way to figure out which class your product falls into is to check the Trademark Manual of Examining Procedure (TMEP).

When is Abandoned Trademark Abandoned?

2011-11-17T06:00:00.000-08:00

Dear Rich: I would like to use a trademark that was first used 2/2007 and has been deemed 'abandoned' since 8/2008. On your blog you note that the trademark is deemed abandoned if the owner does not use it for an extended period of time with the intent not to resume use. How can I find out if the owner intends to use it? What did the owner do/not do that caused the trademark to be deemed 'abandoned'? Thank you for your help! And thank you for triggering an ancient memory of watching "Seduced and Abandoned" in the local art theater with my dad. What a great movie -- even though it was a comedy, it was kind of scary, too.
Right, you had a question. There are three types of trademark abandonment:

an abandoned trademark -- this refers to the loss of trademark rights due to nonuse and it occurs when there is sufficient evidence that the owner intends to discontinue use of the mark. Under the Lanham Act, a mark registered with the U.S. Patent and Trademark Office is presumed abandoned if it is not used for a continuous period of three years or more.
an abandoned trademark application -- this refers to an application that is ditched during the application process. We're guessing that's what your question is referring to because it fits best with your timeline. If you're wondering why a trademark application has been abandoned, you can do the detective work and find the reasons by checking the TARR status of the mark, or if necessary by reading through the documents you can access for free via the USPTO's TDR (Trademark Document Retrieval). This is accomplished by clicking around and reading the PDFs associated with the applicant's file. By reviewing the documents in the application file you can learn whether the applicant just ran out of steam at the USPTO or whether the USPTO examiner had a good argument as to why the mark shouldn't be registered. Keep in mind that if an application was abandoned because an examiner objected to registration that could be a strong indicator that you will run into problems with the same mark.
an abandoned trademark registration -- this refers to a trademark registration that is canceled, usually because the owner failed to follow certain formalities such as a renewal. Again, you can find the reasons by searching trademark records. The most common reason is that the owner didn't file a statement of continued use, resulting in cancellation. Often it's okay to step in and begin a similar use but you should always check the marketplace to confirm that the previous owner is not still claiming rights even without the registration.

As for determining whether a company abandoned its use of a trademark, you need to do old-fashioned research. Check retail stores, search online, or -- as we used to do back in the day -- call the company and asking whether you can still buy the product or acquire the service.

How Long Can Ex-Employer Chase Ex-Employee?

2011-11-16T06:00:00.000-08:00

Dear Rich: I stopped working for a small California tech company in 2008 and now I'm working for a competitor. My ex-employer recently found out about my job and is threatening to sue because he says I still have trade secrets and that I will disclose them at my new job. Can he still bring a lawsuit after all this time. Isn't there a time limit? There is a time limit for bringing trade secret claims in California. It's three years from the date the trade secret theft was discovered (or should have been discovered with reasonable diligence). So, depending on when you began working and other factors, your ex-employer can probably still bring the suit. That time limit also may depend on whether the ex-employer and you had a written agreement (which may establish its own time limits on secrecy).
Time limits may not be the main issue. According to your letter, your ex-employer is concerned about a prospective disclosure of secrets, not an actual disclosure. If that's the case, that's probably not going to fly in a California court. California law doesn't support claims based on "inevitable disclosures" by former employees (although an ex-employer may be able to get an injunction for a "threatened disclosure"). Here's more on California trade secret law.

Can We Upcycle Band T-Shirts?

2011-11-15T06:00:00.000-08:00

Dear Rich: In an online selling venue, we have a thread going with a discussion about upcycling a t-shirt with touring band theme designs on them. One person wants to use these copyrighted shirts to "upcycle" them into another piece of clothing or a hand bag, that they would then offer for sale. Some of us say "no" because it's still a copyrighted image on the shirt. You bought the shirt, not the image. They say since they own the shirt, they can do anything that they want with it. They say that the shirt maker bought the right to use the image, therefore, the copyright owner has already been paid. We had to look up the definition of upcycling and as far as we can tell, it's recycling but with a bigger profit margin. Like, lately we've been capturing the cold water in our shower as the water warms up. If we just dump that water on to our plants, we're recycling, but if we flavored that water, froze it, and sold it as Fair Trade Popsicles, we would be upcycling. (We think lime flavored would be best as it would have a green color.)
Right, you had a question. You should be able to re-use band touring t-shirts in clothing or in a handbag without asking for permission. Copyright law permits the purchaser of a copyrighted work to resell, destroy, or do whatever they want to that work, as long as they don't step on any of the copyright owner's exclusive rights. This principle is known as the first sale doctrine, and that's why people can sell used books, movies, and music on eBay and Amazon. The term "first sale doctrine" comes from the fact that the copyright owner maintains control over a specific copy only until it is first sold. (One exception: If it's a limited edition artwork or fine art work -- for example, signed and numbered photographs created in limited editions of 200 or fewer copies -- you can't destroy it.)
But it's not so simple. The rules are a little different once you start to disassemble or reconstruct the copyrighted object. In one case, for example, it was okay for a company to make baby bedding from a copyright and trademark protected fabric. But there is a conflicting line of cases that makes things a little confusing. In one case, a company purchased a book of prints by the painter Patrick Nagel and cut out the individual images in the book and mounted them in frames for resale. A court of appeals in California held that this practice was an infringement and was not permitted under the first sale doctrine. (Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988).) (A similar result was reached in Greenwich Workshop Inc. v. Timber Creations, Inc., 932 F.Supp. 1210 (C.D. Cal. 1996).) In a different case, a company purchased note cards, mounted them on tiles, and resold them. A federal court in Illinois determined that this practice was okay. (Lee v. Deck the Walls, Inc., 925 F. Supp. 576 (N.D. Ill. 1996.) (The same result occurred in C.M. Paula Co. v. Logan, 355 F. Supp. 189 (D.C. Texas 1973).) So, under these rulings, a person cannot rip individual images from an art book and resell them in California, but a person can mount individual note cards and resell those in Illinois and Texas. We don't think these rules will affect your activities unless you were to cut up a shirt and take two or more separate images and repurpose them on multiple products. But reusing a single shirt to create a single item of clothing or a handbag should be fine.
Beyond copyright. There are some other rules for repurposed items that contain trademarks or infringe on a band's right of publicity. Most likely these won't be an issue but to be on the safe side, you can avoid any impression that the touring band endorses the shirt by advertising the items as Handbags Made from Upcycled Rolling Stones T-Shirts instead of saying Rolling Stones Handbags.

Can We Pilfer Celebrity Photos From IMDB?

2011-11-14T06:00:00.000-08:00

Marlon Brando and James Baldwin
at 1963 March on Washington

Dear Rich: I wanted to post some photos for a celebrity article at my website. I’ve totally forgotten rules regarding photos. Can I pilfer IMDB and give an attribute to them or do I actually need their permission? Are there any secret public domain photos for celebs you know about? The copyright in celebrity photos is owned by the photographer (or by the agency to whom the photographer has transferred rights). We doubt whether the IMDB owns rights in all the photos it posts. Most likely, it's acquired those rights from the copyright holders. Often large celebrity-styled sites have ongoing 'subscription' deals with the companies that own photo rights such as Getty Images, PR Photos, PictureLux, and Shutterstock.
Operating without clearance. If you work for a website company, you're best off not jeopardizing your job by using unauthorized photos. The price you'll have to pay -- time, threats, lawsuits and payments -- if you're caught will far outweigh the licensing costs. If you're just posting a photo occasionally to your personal blog, you're less likely to get hassled but beware that photo agencies employ various means of tracking digital photo use including digital watermarks and embedded metadata.
Right of publicity. The rules we provide here are for websites where you are using the celebrity photo as a means of illustrating a story about the celebrity -- for example, you're discussing the funny side of Mike Tyson. If you are using the celebrity photo to imply endorsement of your site or to sell a product or service, you'll need the celebrity's permission as well.
Public domain photos. There are some public domain photos of celebrities. Try sites such as Wikimedia and read and observe the terms of the licenses. We're not so sure about so-called public domain photos at other sites -- that is, whether the photos are actually in the public domain. We typed in "public domain celebrity photos" and found mixed results (including pictures of Dwight Eisenhower and Britney Spears -- we don't want to think about the potential mash-up!). Of course photos taken by government employees -- for example, Elvis shaking hands with President Nixon (soon to be a movie) are in the PD. We think that's the case with our photo of Marlon Brando and James Baldwin (above) -- perhaps taken by an FBI agent. (And here's a related video made around the same time).

Can I Get Away With Selling Counterfeit Goods?

2011-11-11T06:00:00.001-08:00

Dear Rich: My cousin sells knockoffs from a famous fashion brand. She makes a quite a bit of money with this 'side busines's and she's offered to set me up. The initial investment is a few thousand dollars. I know it's illegal but what I'm trying to find out is the likelihood that I will get in trouble. What are the chances?We can't tell you the chances for getting caught for selling counterfeit goods. That depends on luck, geography, your online presence, whether you have any acquaintances who have a reason to turn you in, whether your supplier gets busted and decides to flip you, or whether you fall for a sting operation. The sad part of the story -- from a business plan POV -- is that the more successful you become, the more likely you will become a target of all this mishigas. We get similar questions occasionally, so we've posted an article on the subject detailing the legal rules.

What's the "Right" Way to Post Cover Songs on YouTube?

2011-11-10T06:00:00.000-08:00

Dear Rich: My band had a nice show at the Freight and Salvage and we'd like to post some YouTube video but all but one of our tunes is a cover song.What's the current custom on that score on YouTube?I've peeked at some stuff on the web about this, but am not getting very clear answers. The whole YouTube ethic seems to be post and ask forgiveness later, but I'd like to just do it right, if there is a "right" way. Remember the good old days when the "right" way to promote a band was to bribe a DJ or the person at Tower Records who reported to Billboard? But what happens now that radio programmers are out of the picture and record stores owners are MIA. Did digital music wreck the whole payola thing? Or is it more of a crowd-sourcing activity now -- like you bribe folks for YouTube views? Or you pay to get "Likes" at Facebook?
Right, you had a question. The short answer is to give up on doing it the "right" way. The proper way to post a video of a cover tune is to obtain a 'sync license' from the owner of the song -- usually a music publisher that owns songwriting rights. The chances of you, as an unsigned artist, accomplishing that task would be about as likely as obtaining John Lennon's tooth. (BTW, a book on celebrity teeth -- Keith Richards call your dentist -- is apparently available in Canada.). It's for that reason everyone including an aspiring Justin Bieber, apparently posts covers without permission. (Note, that all may change if new punishments are adopted.)
We're talking about covers, here ... YouTube does have a means of locating videos that use major label recordings -- for example if you use a Prince song as a soundtrack for your child's dance routine. YouTube seems to possess digital fingerprints for pre-recorded pop tunes because when we posted a video of our commute to Nolo and included a track by everybody's favorite, Rockwell, we received a notice within hours of posting. YouTube had found unauthorized material on our video (and as punishment was going to run ads over our video). YouTube reserves the right to take down our video but in the interim, the company apparently divides the advertising revenue with the rightsholders -- music publishers and record companies. We're pretty sure YouTube doesn't have similar method for detecting cover versions -- that is, when someone else performs a Prince song. Of course, these unauthorized uses could still be located via old-fashioned text searches or spot scanning of videos. And songwriters who discover covers of their material can still issue a DMCA notice to YouTube (although you don't hear much about that practice these days). So, in summary, the 'post now, deal with it later' approach is the default mechanism for covers.
What about Limelight and Harry Fox? Harry Fox and Limelight are companies that provide a means of obtaining a compulsory license -- the right to release CDs and MP3s of cover songs. These licenses do not apply to audio-visual works.

Lump Sum or Royalties?

2011-11-09T06:00:00.000-08:00

Dear Rich: I'm trying to figure out whether to ask for a lump sum payment or royalties for a deal I am making. Is there some formula for figuring out what to ask for in terms of a lump sum? I've heard from someone that you multiply expected revenue for one year times four. Any help would be appreciated. Congratulations on your pending deal. Money in your mailbox -- what a great way to get paid. Except we guess that nowadays everybody has opted for direct deposit instead. And sadly, with everybody doing direct deposit, it's not so easy to simply drop your red state bank and walk over to the credit union and switch accounts as requested by our friends at Occupy Ocean Beach.
Right, you had a question. The Dear Rich Staff would never recommend one method of payment over the other because (1) if we recommended a lump sum and the licensed product was a much bigger success than you expected, you'd hate us, or alternatively (2) if we recommended ongoing royalties and the sales were disappointing, you'd hate us. By the way, here's an article that explains the various types of royalties (per use, per item, etc.) and compares royalties to lump sums.
Why do some people prefer a lump sum payment? Without establishing a preference, we can tell you why some people prefer the lump sum. First, the licensor doesn’t have to be concerned with accounting or auditing records. Second, some licensors like the lump sum because they're not sure of the viability of the licensee or the long-term prospects for the product. Third, some licensors prefer lump sum payments for foreign licenses because of currency conversion rates. These rates -- which measure the foreign currency against U.S. currency -- may change dramatically, making your foreign royalty payments less valuable.
Why do some people prefer a royalty? The periodic payment of royalties rewards the licensor who has a successful product. So if it's a hit, you can quickly join the 1%. Getting paid royalties also may result in lower taxes, depending on how they're categorized on your tax return.
License or Assignment. A lump sum payment for a license is different from a lump sum payment for an assignment. A license may be limited in time, for example, for two or three years. Under an assignment, however, you lose ownership of your invention. The tax implications for the lump sum payment may be different for an assignment than for a license, as well.
Formulas for Evaluating Products. There are many formulas for evaluating product value although we've never heard of the "4X" system you describe (and we're wary of applying it). Such formulas are beyond the scope of our lowly blog and we recommend perusing a text such as this one.

Should I Give Gag-Givers Credit?

2011-11-08T06:00:00.000-08:00

Cartoonist Jimmy Hatlo in a
Lucky Strike ad

Dear Rich: I write and draw a web comic involving a set of recurring characters. Sometimes I run a joke I'm working on by a couple of my friends, to see if the joke comes through clear, and, if not, how could it be improved. However, now everyone I know is starting to tell me their ideas for gags. Their contributions usually consist of either (a) suggesting a basic concept (man falls off horse) or (b) suggesting a change to my fleshed out joke (farmer falls off COW, dies, etc). In both instances, I am still the one laying out the panels, structuring the joke, coming up with the dialogue, drawing and coloring it. Being friends and all, I want to show my appreciation for their help by giving them credit on the individual strip, but I am worried that by putting his/her tag alongside mine, I am giving up sole control of my copyright on that strip. Is that the case? The Dear Rich Staff is wondering about jokes in which people fall off animals. We suppose that's an interesting niche although the idea of a farmer falling off a cow and dying seems sad to us. Maybe it could be funny if it was a zombie farmer, though frankly, we're not sure about all this "funny" zombie stuff. It must be tragic to be a zombie, worse than having dementia or even worse than being trapped on BART next to a woman iPhoning her friend about wedding invitations. Wait, here's a concept for a web comic strip -- a zombie wedding planner. Or did we see that movie?
Right, you had a question. We doubt that you would need to share copyright with someone who gives you a gag for a comic strip. We think your contributors are providing concepts that are probably unprotectible under copyright because (1) the concepts are ideas, or, (2) the concepts constitute unprotectible short phrases. As we've written before, it's tough to protect gags and jokes. What's protectible is the manner in which you express your comic strip. If, however you are collaborating with someone and going beyond the basic gag idea -- say for example, discussing what the comic panels would consist of -- then you may be expanding into co-authorship and copyright co-ownership. So avoid going beyond a discussion of the basic gag. If you want to feel more secure, and if you're going to solicit ideas online, provide terms and conditions in which the contributor agrees to give up rights when submitting an idea.
A tip o' the Hatlo hat ... As for providing attribution, that's up to you. It certainly worked for cartoonist Jimmy Hatlo who encouraged readers to send in ideas and then gave the contributor a "tip o' the Hatlo hat" attribution.

Wants to Use Historical Photos in Book

2011-11-07T06:00:00.000-08:00

Dear Rich,I have photos I want to use for a book I am writing. The photos were given to me by the photographers. As far as I know these photographs were never published. They photos were taken in various years including 1914, 1924, and 1965. The photographers are all now deceased. However, the people who gave me the photos were informed that I was writing a book about local history and were going to use the photos for research. Can I use these photos in my book? Do I need to try to contact the descendants of the photographers in order to get permission or can I just credit the source of the photographs? I also want to use a photo I found in a history book. The photo is a pre 1923 portrait of a local man. The caption for the photo reads “Courtesy of William B. Secrest, Fresno, California.” Secrest is the author of the book and owns the original photograph. Do I need to track down William Secrest or can I use the photo without permission since it is pre 1923? The history book was published in 2002. I would of course appropriately cite the photograph. We think you'll be okay to use all of the photos described, but it gets a little complicated.
The 1914, 1924, and 1965 photos. If the photos were never published and the photographers died before 1941, the works are in the public domain (Here's the official explanation). Otherwise, the unpublished photos will not become public domain until the author has been dead for 70 years. (Based on this rule, the 1965 photo could not be in the public domain.) Even though your one or more of your uses is likely to be unauthorized -- and an infringement -- we think that you will have a strong fair use argument, and we also think that the likelihood that the descendants of the photographer will learn of your use (or care) is slim. A commercial publisher may require that you indemnify the publisher if there is a problem. You may want to consult an attorney at that point.
As for the pre-1923 portrait. If the pre-1923 portrait was first published with authorization before 1923 it's in the public domain and you're free to use it. If it was first published after 1922 but before 1964, the photo is in the public domain if it wasn't renewed (and most were not). If the first publication was in 2002, and the author died before 1941, it is also in the public domain. (See, we told you it was complicated). As for the prolific California historian William B. Secrest, we think -- and we could be wrong -- that he owns the photo and lent it for use in the book. The "courtesy" he has extended is that he provided access to the photographic print. Was there a copyright notice associated with the publication in the 2002 book? That could also be indicative, though not decisive as to the photo's copyright status.

When Minor Children Own Stock in Small Business

2011-11-04T06:00:00.000-07:00

Dear Rich: I own a small business. My children and I are stockholders. Since they are minor children, I presume, but am not certain, I can exercise any authority over their stockholder proxy at a corporate meeting. Does Nolo have any books are web links for information on this? This question is way far afield for the Dear Rich Staff. However, we work not far from knowledgeable corporate attorney and ultra-runner, Diana Fitzpatrick, who provided us with a helpful answer.
It all depends on how it's owned. Whether or not the parent can vote the stock held by a minor child depends on how the stock is owned or held by the minor. Minors can't purchase or open brokerage accounts because they can't enter into legally binding contracts until they reach 18 (or whatever the state law is for majority age). But they can own stock that they have received by gift or inheritance and may have all rights, including voting rights, with regard to that stock. If the minor has the voting rights then the minor could give a parent the proxy to vote those shares (provided proxy voting is allowed).
If you're in California ... If you're incorporated in California, take a look at Cal. Corporations Code Sec. 702 (d) which provides that shares standing in the name of a minor may be voted by proxy unless a guardian of the minor's property has been appointed and written notice of such appointment is given to the corporation.
Another possibility. If the stock is held in a custodial account under the Uniform Gifts to Minors Act or there is some other trust or fiduciary account set up, then the custodian or trustee or other fiduciary would have the voting rights for the stock. As you may be aware, parents often give stock to children under the Uniform Gifts to Minors Act. This allows the donor/parent to give the stock to the minor but the stock is held in a custodial account where the custodian (who can be the donor/parent) controls the account until the child reaches the age of majority. A custodian of stock held in accordance with the Act has sole voting authority over the stock held in the account.

Can We Use 1920s Quotes from New York Times?

2011-11-03T06:00:00.000-07:00

Dear Rich Staff Member Is Interviewed
for Saturday Morning Today Show.

Dear Rich: In a book I am writing I have used several lengthy quotes from news articles from the New York Times dated in 1921, 1922, and 1923. Actually, what I am using is the NYT quoting some individuals--I am not actually quoting the NYT, if this constitutes a difference. If published, I doubt that the book will be a commercial blockbuster. Am I protected by 'fair use' laws using material from the NYT that was published before 1923? The Dear Rich Staff chose your question for Thursday because that's the day we get the Nielsen sales numbers from Author Central at Amazon. What a sad day that has become. And because we're so depressed, we look for questions that we think won't take much time to answer. So the short answer to your question would be yes, you can use any authorized pre-1923 publication in the U.S. (because it's in the public domain). The quotation aspect -- that is whether an interviewee's statements become part of the intervier's copyright -- is a more complex subject and we think this article does a great job of summarizing this prickly issue.

Honk if You Want to Register Your Bumper Sticker as a Trademark!

2011-11-02T06:00:00.000-07:00

Dear Rich: I am in the midst of applying for a trademark and am confused about which category in the trademark manual my item falls. The item is essentially a slogan (code 045) which is being printed onto bumper stickers (no code found) and also onto baseball caps and hats (code 025). The intent is to expand the list of goods sold that are branded with the slogan. The bumper stickers and caps are the two initial items I will be selling. Which category I should enter on the application? We think you'll have a hard time registering a slogan with the USPTO unless you can demonstrate that the slogan is associated with a product or service -- that is, a product other than caps or bumper stickers. For example, a slogan like the one shown above would be difficult to register, as would variants such as

Honk if You Like Cheeses,
Honk if You Would Like to See My Finger,
Honk if You're Going to Run Me Over,
Honk if you Like Prune Tacos (our favorite),
Honk if You Like Peace and Quiet,
Honk if You Are Living a Life of Quiet Desperation, or
Honk if You've Never Seen a Gun Fired From a Moving Vehicle (scary).

That's because these slogans are considered ornamental (they inspire, entertain, or amuse) or informational (they express a thought). To acquire registration they must create a consumer association with a product or service (for example, Honk if You Sell Car Horns for an applicant that sells car horns).
Honk If You Receive an Objection from A Trademark Examiner. Upon receiving an application for a slogan, the trademark examiner will probably object on the basis of § 1202.03 or § 1202.04 of Trademark Manual of Examining Procedure or TMEP (excerpted below).

§1202.03 Refusal on Basis of OrnamentationSubject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. This matter should be refused registration because it is merely ornamentation and, therefore, does not function as a trademark ...
§1202.04 Informational MatterSlogans and other terms that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable ...

It's on these basis, for example, that the slogan THINK GREEN was rejected as a trademark because it was merely a statement of environmental awareness. The slogan, HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE was registered because consumers associated the slogan with a particular product. The only way to overcome this objection is to show that consumers associate the slogan with your products or services.
Honk if You've Used the Wrong Classification Codes ... Also, you referenced code 045 in your question. Class 045 is for legal services (Honk If You Like Litigation) so we don't assume that's what you meant unless you've come up with a slogan for a law firm (Honk If You Like to Pay For Overpriced Associates).
Honk if You've Tried Copyright Protection. Finally, a bumper sticker slogan cannot be protected under copyright law as copyright does not protect short phrases. A short phrase can be protected in conjunction with an illustration or it may be protected in some cases, if it is taken from a larger well-known work, such as taking a line from a movie.

Will NDA With Foreign Company Prevent Theft?

2011-11-01T06:00:00.000-07:00

Dear Rich: I have a patent pending here in the states but I want a Chinese company to manufacture my product. Unfortunately, I don't have any intellectual rights overseas. Will a nondisclosure noncompete agreement keep a foreign company from stealing my idea? Neither a nondisclosure (NDA) or a noncompete will keep anyone from stealing your idea whether in the U.S. or abroad. Agreements don't prevent wrongdoing, they merely establish the rules in the event wrongdoing occurs. An NDA is no different. For example, your NDA may establish the location of the lawsuit, whether the winner gets attorney fees, whether arbitration is mandatory, or the ease with which you can get an injunction.
Back in the U.S.S.A. NDAs enforced in the U.S. usually have a predictable outcome. But once you leave American jurisdiction, the results of enforcement are not as predictable and the costs of enforcement are far more expensive. That increases the odds that your NDA will be breached and that a foreign manufacturer will duplicate molds, copy packaging and send knockoffs out the backdoor and into countries in which you have no intellectual property rights.
Separating the good from the bad. Most foreign manufacturers rely on their credibility and trustworthiness to keep getting new business. So your first goal is to do your homework and try to figure out which ones are reliable and which ones are opportunists. The resources, below, may help you.
Protecting secret stuff only. Keep in mind that a nondisclosure will only protect against the disclosure of confidential information. Once your patent is published, it is no longer confidential. So the only thing your NDA can actually protect is confidential information regarding manufacture, sales and distribution, and know-how needed to produce and distribute the patented item. A noncompete is typically aimed at preventing ex-workers from competing against you and that's not likely to provide much benefit. However, some provisions, in conjunction with your NDA -- for example, an agreement that the manufacturer will not manufacture or distribute your product without your authorization -- can be crafted to deal with your specific situation. A lawyer's assistance may be required. In summary, get an attorney to make sure the agreement provides the best dispute-resolution procedures.
After you've found the best choice. Your lawyer may include provisions that will help you in a foreign deal. Here are some things to consider.

Jurisdiction. The only way to get a foreignmanufacturer into a U.S. court—unlessthe company does substantialbusiness in the States—is to include aprovision in the NDA that requiresthe manufacturer consent to U.S.jurisdiction. This may prove difficultto negotiate (and to enforce), as foreign manufacturers areoften hesitant about submitting to theU.S. judicial system.
Choice of law. Every country has laws as to howcontracts are interpreted. You would want the NDA to be interpreted according to U.S. law.
Arbitration. Arbitration is similar to litigationbut with less formality and expense.You’ll usually benefit byagreeing to have disputes arbitrated.Hopefully, the manufacturer will agreeto arbitrate the matter in the UnitedStates. If not, there are three popular(though expensive) spots for international arbitration: London (theLondon Court of International Arbitration),Paris (the International Courtof Arbitration of the InternationalChamber of Commerce), and Stockholm(the Arbitration Institute of theStockholm Chamber of Commerce).Also, if possible, your agreementshould award attorneys’ fees to thevictor in the arbitration.

Resources. These resources may help you sort out manufacturers in foreign countries:

U.S. Department of Commerce(DOC) and theU.S. Small Business Administration(SBA) are interestedin helping the sales of U.S. goodsoverseas. If an inventor has a trackrecord and the possibility of actuallyplacing a product in the market (oralready has a product and is seekingto market it overseas), the DOC andSBA offer assistance.
Check outthe Department of Commerce site atthe International Trade Association(ITA) or the DOC’sexport information.
National Trade Data Bank has the mostextensive and detailed statisticalinformation on trade in specificproducts and countries. It is not free,but you can enroll for a free guestsubscription and try it out.
The Federation of International TradeAssociations (FITA) has a website with many links,leads, and statistics that can behelpful for international businesses.

Insurance for Patent Enforcement?

2011-10-31T10:51:00.000-07:00

Dear Rich: I am patent pending and am worried about what will happen if my patent is granted and a big company rips me off. I can't afford to sue a big company. Will lawyers take my case for a cut of the profits? What do the little guys do? Getting into a lawsuit sounds pretty scary, probably a lot scarier than our neighbor's excellent Franken-pumpkin which appeared yesterday afternoon. It's a beautiful job and when we asked him whether he bought that shaped pumpkin because it looked like Frankenstein, he replied that no, when he got it home and looked at it for a while, the pumpkin said "Frankenstein" to him. Now that's how creative people channel inspiration. It's a little bit like the sculptor who, when asked how to scultpt an elephant, said, "Take a big block of marble and chip away everything that doesn’t look like an elephant."
Right, you had a question. Yes, an independent inventor with limited funds is in a bind when it comes to patent enforcement. Even if the funds can be found to fight a big company, the battle can drag on for years and cause much personal turmoil. Like patent expert David Pressman puts it, the utility patent is basically a hunting license. Obtaining the license without the necessary funds to use it against others makes it a useless piece of paper. There are three common solutions for this issue:

align yourself with a big company. A big company usually will -- as part of your licensing agreement -- chase down (or possibly scare off) thieves and competitors. The downside is that you may end up earning less from your invention if someone licenses it (versus the profit margin if you manufacture it). On the other hand, often it's just the opposite and the right licensee can earn you substantial profits and save you a lot of hassle.
consider offensive insurance. Yes, there is such a thing as offensive patent insurance and you can read more about its pros and cons.
find a contingency litigator. Some patent attorneys take cases on contingency. This is often difficult and can be expensive (giving up a third or more of the recovery). Learn more here.

Can Missionaries Protect Their Initials?

2011-10-28T06:00:00.000-07:00

Dear Rich: I am the founder of a lay missionary organization. We use the initials SMM that shows our affiliation and membership to the Society of Missionaries of Mercy. I have been told by the Society of Montfort Missionaries that they claim that SMM can only be used by their membership. Please advise me. Should we change our initials or inform them that you can't restrict the use of initials? As we discussed in a previous post, asserting trademark rights over initials is possible but often difficult. We've also discussed protecting names of religious organizations. We note that even if the Montfort group did chase your organization into a U.S. court, they would need to prove that U.S. consumers are confused by the mutual uses -- something that might be difficult because the other Montfort group appears to be based in India (and perhaps associated with this Scots group). So, in summary, we think there are some hurdles if the Montfort group wants to obtain a U.S. court order to stop you.
From the legal to the cosmological. Resolution of your question goes beyond legal issues and into trade customs and religious hierarchy. Catholic religious organizations appear to rely on their initials to distinguish themselves from others. This chart, for example, lists 800 such abbreviations. We cannot say whether a change of initials is required to serve purposes of this Catholic exonumia but we hope this matter can be resolved on the basis of religious custom (not U.S. trademark law) and, of course, in the spirit of brotherhood upon which these organizations are founded.

Can Scouting Group Claim Color Scheme?

2011-10-27T06:00:00.000-07:00

Dear Rich: Frontier Girls is a scouting style program founded in 2007 for girls. It has come to my attention that the uniforms I use in Frontier Girls are the same color scheme as a single level of American Heritage Girls, another scouting style program founded 1995. American Heritage Girls has a total of five levels and at one level the uniform is navy bottoms, white shirts, and red vests. It is similar to Frontier Girls except American Heritage Girls also has a navy scarf with their uniform. The badges, awards, and layout of the vests are completely different as is the shape of the vest. [Compare them: American Heritage Girls Tenderheart (scroll down) vs. Frontier Girls.] Their other four levels of uniforms look nothing like Frontier Girls. I have been told that I need to change my uniform, but do not feel that anyone should have the right to trademark the colors red, white and blue, as these stand for our country and any patriotic groups should have a right to use them. Are you being told to change your uniforms, solely on the basis of the color scheme, or are you being told to change on the basis of the overall appearance -- the colors, shape, and design (or what we call trade dress)? There's a difference, as we explain below. In general, the Dear Rich Staff thinks that American Heritage Girls has some challenges ahead if it drags you into court.

Claiming Color schemes as a trademark is tough. In order for American Heritage Girls (AHG) to prove that Frontier Girls (FG) infringed solely on the basis of the color scheme, AHG would have to prove that their use preceded FG, that consumers of scouting-style services associate AHG with red, white and blue, that the colors are not functional, and that FG's color scheme is substantially similar to AHG such that consumers are confused when seeing a FG uniform and believe it is AHG. Proving these claims requires substantial evidence -- for example, consumer surveys and expert testimony. We think it will be hard for AHG to claim the color scheme as protectible.
Trade dress is also tough to protect. AHG may seek to stop FG based on their overall trade dress -- the total appearance of their uniforms (not just the colors). For example companies such as Re/Max and Bank of America go after red, white and blue competitors but usually only if the overall appearance of the signs or marks is similar (not simply the colors). AHG features at least five different uniforms in their program. So it may be a challenge for them to prove that consumers associate any one of the five as a specific source identifier. In addition, as you point out, AHG's blue "neckerchief" distinguishes the AHG uniform, somewhat, from the FG uniform.
Bad publicity. It's possible that the potential headlines -- "Scouting Group Claims Exclusive Rights to Red, White and Blue" -- might dissuade AHG from seriously pursuing the claim.
Dilution, anyone? In addition to claiming infringement, AHG can make a dilution claim regarding the colors if it can prove that red, white and blue comprise a famous mark for AHG and that the colors are not functional. We think that's a tough claim to make as well.

For your FYI Dept. AHG has not registered their trade dress or color scheme. They have only registered their name (claimed for "Educational services, namely, conducting workshops, courses of instruction and day and overnight retreats for girls and young women that support traditional values of God, family and country to promote leadership, social, physical and intellectual development.") And they've been using that mark since 1985. That makes them trademark newbies when compared to the Boy Scouts.

Using Text of Operas ... in Paintings

2011-10-26T06:00:00.000-07:00

Dear Rich (and Dear Rich Staff): I have created painted works of art with oil on canvas and water color marker on paper using the text of public domain operas and plays in such a way that they are no longer readable as text. The full text is still there but, it has been over written in a variety of colors such that one could not actually gain any context or meaning from trying to read the painting as a copy of the opera or play. I judge that this as fair use and should be able to sell my work without consequence.Do I need to get permission to use copyrighted work that has been similarly obscured for this purpose if I intend to sell the unique painting I have created? Just an FYI, but you state you're using the text of public domain operas. If the text of the opera is in the public domain, there's no need for a fair use argument -- you can do whatever you want with it. As for your question about the use of copyrighted works there are two ways that could play:

If you purchased the text of the opera -- for example, in sheet music form or in a book -- and you are painting on the pages of text (or incorporating them a collage), you won't need permission. You can probably justify that under the first sale doctrine.
If you are reproducing the text in a painting, we think you can probably make a strong fair use argument because you are using a small portion of the opera's text, you are not competing with or depriving the copyright owners of commercial gain, and based on your description, your use appears to be transformative -- that is you're making a new statement. if the words are obscured so that their meaning cannot be ascertained, we're not even sure you've infringed as your artwork no longer would be substantially similar to the opera text. Check out fair use rules before proceeding.

Publishing Personal Stories: What Permission is Needed?

2011-10-25T06:00:00.000-07:00

Dear Rich: I am creating an online platform for people to share their personal stories that I am going to publish. What kind of legal document do I need to put together? Personal stories? We have a personal story we'd like to post. It's about a blogger who ordered some T-shirts but there was a problem making the registered symbol -- ® -- appear properly on the back (we're not assessing blame just yet) and so the blogger spent a lot of money on shirts with a misplaced ®. It started as a sad story but after some exchanges with customer service, we're starting to think that it will have a happy ending.
Right, you had a question. The good news is that your site can avoid most liability by abiding by the Digital Millenium Copyright Act (which shields you from claims of copyright infringement) and the rules set forth in Section 230 of the Communications Decency Act (which shields you from liability for statements published by others). Keep in mind, you must follow the rules for the shields to work. In general, your concerns for posting personal stories are outlined below:

Copyright: You should obtain an assurance that the work is original to the author and that the author has the right to permit publication and that the author grants you the limited right to post it online. If you want more rights -- say to publish a collection of stories in eBook format -- you should acquire those rights now. The same is true if you want the option for more rights. You should learn more about acquiring publishing rights
Invasion of Privacy and Trade Secrets: Personal stories involve personal details. You need an assurance that the posting won't reveal any personal or trade secrets that will cause you to get sued.
Children's Privacy: We would suggest avoiding taking any materials from children under 13. (You can seek an assurance that person submitting the story is 13 or older.) If you start taking information from children under that age, you'll need to deal with a law known as COPPA and that may not be worth the effort.
Defamation: Personal stories that include untrue statements about others could lead to defamation suits. You need an assurance there's nothing defamatory.

So, in summary, you need permission to publish and assurances that the publications don't violate any laws. These assurances and permissions can be bundled in a click-to-accept statement that the user must agree to before uploading the information. Any electronic method of assent that can be verified -- checking a box, clicking to accept, etc. -- will suffice.

Wants to Use Thrift Store Dolls to Illustrate Stories

2011-10-24T06:00:00.000-07:00

Dear Rich: I wish to illustrate about 25 of my own short stories, each with one ensemble of about 6 to 12 small objects such as dolls, ornaments, cut-outs of posters, etc. Many of these objects I find at thrift or junk stores, so they no longer have any packaging or any identifying marks. Other items are new and/or have identifying marks of the original source. Can I publish my photos as illustrations to my written work without seeking permission from each and every original creator of each item in every ensemble, or is there some fair use law that allows me to circumvent the (pretty much) impossible task of getting permission for every single item? There's no law we can point to that will guarantee you're okay but if you're self-publishing this book, you can probably make a strong fair use argument. That's because we assume your use is transformative -- that is, your use of the dolls or other images makes a new statement or takes on new meanings. Before making the claim, you should review fair use rules (as each use requires a separate analysis).
What if You Get Signed to a Big Deal Publisher? If you're planning to sign with a commercial publisher then things could get more complicated because most publishers will require that you clear copyrighted materials beforehand -- they're not big fair use fans. And they'll insist that you indemnify them as well. Which means that if they get sued, you'll pay for their legal costs. Ouch! So, if you're looking at a commercial publishing deal take your questions to a copyright lawyer for an expert opinion on each use. Then, you can proceed with more confidence if you need to indemnify.

Using 70's Voice Over in New Music Track

2011-10-21T08:50:00.000-07:00

Dear Rich: I'm in the final stages of producing a music single. In the song I've sampled the voice-over of a 1970's TV ad. The voice-over is of a familiar and famous figure from that period. Would I need to clear this and for this purpose with whom, as I assume in this case that no record company or music publisher would be involved. We're not sure which familiar and famous person's voice-over you're using but if you're creating a second single, you might want to consider a classic 70s TV ad in which a size-challenged nautical figure -- perhaps a descendant of this character -- rides around in a boat in your toilet and urges consumers to pollute the waters with blue chemicals. How '70s is that?
Right you had a question. You're correct that you wouldn't need to clear the voice-over recording with a music publisher or record company. You may not need any permission at all, as explained below, but there are three possible legal rights you need to consider:

the copyright on the commercial. The most likely permission needed is that of the copyright holder -- that's likely to be the ad agency that created the commercial, or the company whose product is featured in the commercial. The copyright owner would own rights to the text of the commercial and to the audio. You wouldn't need permission if you claimed fair use (which can always be a bit tricky). And you probably wouldn't need to bother with permission if the company holding copyright had disappeared and you couldn't track down a successor. (And of course, you wouldn't need permission if your song had limited appeal and was unlikely to be heard by anyone connected with the copyright owner -- what we call the "tree falls in the forest" theory.)
the use of the famous figure's voice. If the familiar and famous person's (FFP) voice is recognizable and listeners think that it is being used for purposes of endorsement, the FFP might have a claim based on the right of publicity. We wouldn't worry about this too much because the FFP's ROP probably won't be triggered unless the song is used for a 3rd party commercial purpose -- that is, it's licensed for use with another product or service (This article provides a short ROP summary).
trademark rights. If the product name (the subject of the commercial) is included in your song, that might trigger claims of dilution or infringement but both of these claims are unlikely to succeed as use of trademarks is permitted for informational (or editorial) uses such as songs. One judge characterized the conflicting interests of the parties "Speech-zilla v. Trademark Kong."

.MIL Websites: Public Domain?

2011-10-20T06:00:00.000-07:00

Gassed by John Singer Sargent, 1918

Dear Rich: yesterday you wrote about a website that you characterized as public domain because it was part of the U.S. military. Does that mean that every website that ends with .mil is public domain and material can be used freely? Ahhh ... Our previous blog never said that the website itself was public domain, only that some of the material at the site was public domain. When a website ends with .mil, you can be sure of only one thing: the Department of Defense has certified that the site is associated with the U.S. Military. The .mil domain is known as a sponsored top level domain which means that only those parties that have been cleared by a certifying organization - in this case, to the DoD - can use it. Other 'certified' domains include .gov, .edu, .aero, .museum, and .coop.

Why Can't We Use Military History Photos in Book?

2011-10-19T06:00:00.000-07:00

Dear Rich: We publish ebooks for the Amazon Kindle and other ebook devices and frequently use U.S. government material for our works. We are very clear on what to use (e.g. no contractors work) and where to distribute it. But one thing appears very strange to me. How can the U.S. government say that the information on a certain .gov or .mil website is public but at the same time restrict commercial usage? To give you an example kindly check this site that offers military and historical texts worked out by U.S. government officials and not registered at the Copyright Office (we checked that already). From my understanding - and that's true for Germany - if a "thing" is public domain you are free to do with it whatever you want, give it away of sell it, make derivatives etc. etc. Can you shed some light on this? According to the CMH site:

"Unless otherwise noted, information presented on CMH Online is considered public information and may be distributed or copied for non-commerical purposes. Use of appropriate byline/photo/image credits is requested. If copyrighted or permission restricted materials are posted on CMH Online, the appropriate credit is given. Visitors wishing to repost or use such materials for their own projects should make separate arrangements for permission with the owner."

In other words, the site claims to sift out those works that are under copyright by labeling them with a credit. Everything unlabeled presumably is in the public domain. Assuming you can trust the site's filtering of material, then, as the Supreme Court has stated, you can do anything you want with those materials, with or without attribution to the author.
By the way, although works prepared by federal government employees are in the public domain, you may be surprised to learn that the U.S. government -- though it rarely exercises the right -- is legally entitled to claim copyright outside the U.S. (see page 59 of link).
P.S. The licensing dilemma. Finally -- and this doesn't seem to be an issue at the CHM site -- we're always concerned about the trend to license public domain material. For example, if you check out the terms for this Department of Defense site, you'll see that some restrictions have been placed on use of U.S. government imagery. That claim is made on the basis of a license -- that is, you agree that as a condition of using the website, you will abide by the rules regarding photo use. Generally such licenses are only effective if the user must click to accept or demonstrate some action taken to indicate assent.
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Has Business Idea: Needs Protection

2011-10-18T06:00:00.000-07:00

Birds killing pigs to get eggs?
Another world-changing idea!

Dear Rich: What is the best way to determine if a business idea and its application can be trademarked and or copyrighted?If I determine the application can't be protected, can I protect the name I give the application? The Dear Rich Staff has come up with a lot of great business ideas over the years. Once we had this idea for a cigaret ring that you could stick your cigaret into so you wouldn't get tobacco-stained fingers. Alas, our prototype was a big failure, almost triggered a mini-conflagration, and was fully abandoned when we decided we didn't need to enable smokers. Then, we had this idea to embed words into kaleidoscopes so that random messages would come up when you turned the viewer. Interesting idea ... but impossible to implement even after buying several books on kaleidoscope construction. Then, we had this idea ... well, you get the picture. Like they say ideas are easy; implementation is tough. So, on the one hand, it's important to consider whether your ideas (or applications) can be protected, and on the other it's often more important to determine if the idea can be commercially implemented.
Right, you had a question. Copyrights don't protect ideas, only their expression. So, for example an idea for a software game about angry birds cannot be protected. However, the Angry Birds application that actually performs this task -- and enslaves and distracts millions of healthy minds -- can be protected under copyright law (and patent law if it's novel and not obvious). Names for products and services can usually be protected under trademark law. Here's where you can read more about copyrights, patents, and trademarks.

Needs Help Registering Flower Greeting Cards

2011-10-17T06:00:00.000-07:00

Dear Rich: I myself took pictures of flowers for a set of greeting cards. All photos were taken by me during last 4 months. Some of the cards were gifts to friends, 15 were sold mostly to neighbors, and some were displayed by friends and relatives. All total maybe 150 cards (from 11 different images) were given, sold or displayed. (1) Are the photographs unpublished or published? (2) May I write “approx” nearest date of publication of some photos if I not sure about exact date? (3) Do I need two separate applications to apply for copyright for published photos and for unpublished photos. Your question inspired the Dear Rich Staff to take a picture of a lovely dahlia blooming not far from Dear Rich headquarters. Now, if only we had time to stop and smell it.
Right, you had a question(s). (1) We consider all 11 of your greeting card images to be published works because you have distributed the cards to the public by sale or with the intent to transfer ownership. (If you had only displayed the cards or given them to a select group of people with restrictions, they would be considered "unpublished.") (2) You're on the right track by adding "approx" when providing date of publication. Ifyou’re not sure,state your best guess -- for example, “October 14, 2011 (approx.).” (3) No need for two registrations. As the Copyright Office explains, you should be able to manage with one registration for a group of published photos.

Those 70's Lyrics: Do I Need Permission?

2011-10-14T08:03:00.000-07:00

Dear Rich: I'm working on a book which will be published and it will include music lyrics, but only the lyrics. These lyrics will be from contemporary artists as well as artists/bands from the 1970's. Do I need to get permission to include them? Talking about great contemporary lyrics, please promise us you'll use some Stephen Merritt lyrics. We just watched this documentary about him and thought, 'Wow, now there's a free-thinking lyric writer.'
Right, you had a question. To some extent, it may depend on what you're doing with the lyrics. If you're using them for purposes of criticism and commentary and are only reprinting a chorus or verse -- usually four or five lines -- you can probably rely on fair use as a defense. (But, as we always warn, there's no guarantee that a music publisher won't hassle you over fair use claims). If you're reprinting more than that, or you are not commenting upon the lyrics, you should seek permission from the music publisher to reprint a song’s lyrics in a book. The fees for such uses are not fixed, so a music publisher can charge whatever the market will bear and fees range from $50 to hundreds of dollars to reprint lyrics in a book. We've provided a "lyric permission" letter in our permissions book, but nowadays you can probably work it out with an email exchange. You can research music publisher information at ASCAP, BMI, or Harry Fox. Alternatively (as the lawyers like to say), if you are self-publishing to a limited audience, you can take the risk and operate without permission, though successful writers opine against that.

Pounds and Inches: Part 2

2011-10-13T06:00:00.000-07:00

I am interested in translating the book "Pounds and Inches" by Dr. A.T.W. Simeons.I was wondering if you would be able to tell me what paths I would need to take to goabout checking its copyright issues. For eg. Do I need to be clear on the copyright issue towrite a translation of the book? What if I were to add comments on certain parts to make it easier for the reader to understandcertain content?Can you foresee anything else in such a task that I would have to be aware of legally?I would be deeply grateful for any information, that you could assist me with. We thought Dr. Simeon's name sounded familiar and that's because nine months ago, another one of our readers had a similar query. (See our nuanced response.) Basically, his works would still be protected under copyright but apparently his estate (or successors) are not enforcing copyright. If you add original comments to Dr. Simeon's work, you would be able to stop others from copying your original text, but of course, you could not stop the copying of Dr. Simeon's text.

Does Band LLC Need to Register in Surrounding States?

2011-10-12T06:00:00.000-07:00

Dear Rich: I was considering choosing an LLC as my band's business form. I live in Missouri and would file articles of organization in my own state. My state borders on eight other states. Do we also have to file articles of organization for a foreign LLC in other states in order to play gigs there? No, you would only have to qualify if some portion of your band business was conducted solely in the other state – for example, you operated a practice space or maintained a warehouse of your merchandise or if you were booked for several months straight in a club in another state. Only LLCs and corporations that conduct this type of intrastate business have to qualify in another state. You – and most bands – conduct interstate commerce. You may conduct business across state lines but, for example, you don’t plant yourselves, your employees, or your inventory solidly within another state’s borders for extended periods of time.
What does it mean to qualify in another state? If a business must qualify as a “foreign” corporation, that means the company must file some paperwork, pay some fees, and then pay taxes each year to the other state. Here's an article summarizing all this and you can learn about each state’s rules for qualification at the state’s website for its Secretary of State.

How Do I Protect My Wife's Blog?

2011-10-11T06:00:00.000-07:00

Dear Rich: My wife writes a weekly blog entry for a friend's blog which is syndicated on blogger. Her articles are well received and she has subsequently submitted different items to different trade magazines for potential publication. She currently receives no residual ad revenue from the blog's 'owner'. Should we separately 'trademark' or otherwise protect her articles under her name or company name? The concern would be that the blog owner could also submit her articles or otherwise generate separate revenue stream based on them. It is an unlikely situation, but we wanted to be educated on if and/or how to protect her writing. We've been wearing our Don't Drink and Blog T-shirt for months now (not continuously, of course) and we think it's been effective keeping drunks off of Blogspot. (We also support this Busted Tees special which made us realize how close we were to being Amish). One thing for sure, don't drive and blog.
Right, you had a question. We don't think you can acquire a trademark for the blog because we assume it's your friend's blog, not your wife's. If that's not the case, and your wife is co-owner of the name, the parties can register the blog name by following these instructions. Still, that will only get you the right to stop others from using a similar blog name; it won't give you the ability to stop copying of the blog's text.
Copyright's where it's at. Your wife already has the strongest form of protection -- copyright. She gets it automatically whenever she posts an entry. She can augment her rights by filing for copyright registration. Registration has some great benefits and soon we'll be posting an article on how to register blog articles (though this entry may help, for now). Assuming there is no written agreement to the contrary, your wife owns the copyright in whatever she creates. She impliedly gives her consent for publication in the blog, but not for anything beyond that use. So, if the blog's administrator/owner uses your wife's entries for some other purpose, your wife can legally prevent that use if she chooses to flex her copyright muscles. For the future, perhaps she may want to create a simple agreement explaining how any uses are to be handled -- that is what can be reproduced by the blog owner and her compensation for that use.

Am I Bound by NDA with Foreign Company?

2011-10-10T06:00:00.000-07:00

Dear Rich: I'm in the U.S. and I'm working with a foreign company and we were talking about me possibly helping them with their marketing. I signed an NDA. We both have agreed that I will not do the marketing for them. Now we are talking about me private labeling their product and selling it here in the states. We're in the negotiating stage on price. They are 50% higher than another source for a similar product. I'm happy to give this company 15% to 20% higher payment for their supplement but not 50% higher then their competitor. Because I signed a NDA does this prevent me from going to another vendor? Again, under the NDA it was to discuss marketing consulting. Now we're talking private label/wholesale. So far the negotiating on price is going okay but I want leverage so I'm not handcuffed to buying from him 50% higher them competitive market place. Plus I don't want to sign an exclusive source deal. As far as I know I don't know of any trade secrets that they gave me, just common knowledge that can be found on the web. The Dear Rich Staff is sorry we're not giving you our full attention but we're trying to figure out why our most recent weekly Google Analytics report shows zero visitors since October 1. Oh we see why! Somebody snatched our tracking code. Was it the Chinese bots? Pardon us while we reinsert our code. Ahh ... that feels better!
Right, you had a question. We're guessing that your primary concern is whether you can ditch the foreign company and go with somebody else without violating the NDA. That shouldn't be a problem, assuming that (1) the document you signed is strictly an NDA, and (2), you don't violate the NDA by giving up any confidential information provided by the foreign company.
Strictly an NDA? Probably you signed a typical NDA that prohibits disclosure of secrets. But be aware that some documents titled Nondisclosure Agreement, Confidentiality Agreement, or even Disclosure Agreement, go beyond just addressing trade secret issues and can include other restrictive provisions -- for example, it may temporarily prohibit solicitations of competitors or contact with customers. So, numero uno, be sure that you didn't sign paperwork that presents additional hurdles. If the agreement is more than an NDA, you may need to consult an attorney.
What can't you do? Assuming it is a straight NDA, keep in mind that their language is often overly restrictive and purposely vague. Those who insist on them sometimes rely on their ambiguity to instill a sense of fear. However, an NDA only prevents disclosure of trade secrets -- confidential information that's unknown by competitors and which is kept confidential via reasonable security efforts. Many such "secrets" don't qualify as trade secrets, and -- if you're confident that they're not protectible -- you are free to disclose them regardless of the NDA. In other words, if all of the information disclosed to you is publicly available, the foreign company will have no basis to sue under the NDA should you go with someone else.

Trademark v. Domain Name: Can We Co-Exist?

2011-10-07T08:05:00.000-07:00

Dear Rich, I have a situation similar to one in a previous post. I acquired a unique domain name in 2008 with much trouble. I was planning to build an online store. The name is related to fashion accessories. My website was built in 2009 and it was open to the public. People can see it on the internet but the product and payment part was not done so there was no transactions. But at the same time, I used the same name in a local funding rasing event in California in 2009. I generated some transactions there. I was not able to do too much since then. Two months ago, in June 2011, I found a U.S. software company tried to register a trademark for that exact name for some computer software. I also found that it is online downloadable and it became first in Google listing for that name. My questions are: 1) Will I lose the domain? 2) Can I still apply for trademark? 3) Can we co-exist? The short answers to your questions are No, Yes, and Yes (To save you some time, we've provided an explanation of eCommerce trademark basics.)
A classy distinction. Our big takeaway is that trademark law only protects marks in regard to the class of goods or services being offered under that mark. That's why you can wear American Apparel while you're flying American Airlines, or look for jobs at Monster.com while listening to speakers connected by Monster cables, or fasten Arrow staples to your Arrow shirt. Only those marks that are rock stars in the trademark world -- think Nike or Coca-Cola -- can claim a likelihood of expanding into a broad array of goods and services, and more importantly can prevent another company's use of their famous mark because a third-party use dilutes it.
Domain names and trademarks. A registered trademark owner can only dislodge a domain name holder if the domain name is identical or substantially similar, and the domain name owner acquired or is using the domain name in bad faith. That generally means the domain name holder is exploiting the trademark owner's rights. You won't have that problem because you have a bona fide intent to use the mark for fashion accessories not to compete or trade off the software company's name.

Can I Use 'Fortune 500' ?

2011-10-06T06:00:00.000-07:00

Dear Rich: I am working on a research project about architecture and Fortune 500 companies. I want to publish my research but would like to learn more about trademark and copyright. The questions I have are the following: Can I use "Fortune 500" in the name of my book? Do I need permission from Time Inc? Can I use a company's name from the list of "Fortune 500" in my book? Do I need permission from Time Inc. and/or each listed company?I have made original architectural drawings that contain the logo of the company and the design of their existing space, such as McDonald's. Do I need permission to publish my drawing? Here we go: 'Yes ' you can use Fortune 500 in your book title. We found at least eight books that made similar uses from dating as a business strategy to spirituality in marketing. Avoid duplicating the Fortune font and logo. And, no, you don't need permission from Time Inc. Yes, you can use a company's name or logo in your book without permission because your work is "informational." For the same reason, you can publish company logos and your drawings of the buildings - yes, buildings can be the subject of trademark protection. Buildings are also protected by copyright law, but not if they were created before 1990. Even with that protection you can take photographs or make other "pictorial representations" of post-1990 buildings. So you're good to go all around

One More Time: How to Register a Blog Name

2011-10-05T06:15:00.000-07:00

Charles Dickens:
The world's first blogger?

Dear Rich: I read your entry on whether you can register a blog name as a trademark. It's helpful but doesn't really explain how to register the name. Can you provide a step-by-step explanation for registering a blog name at the USPTO? It would be much appreciated. The Dear Rich Staff is here to serve. We posted this article explaining the registration process.

Eat Pray Ask Permission?

2011-10-04T07:18:00.000-07:00

Dear Rich: I'm interested in knowing if you have ever encountered clearing an "inspired by" situation. For example, I have written a piano solo inspired by the novel, "Eat Pray Love." I have not put that information on the cover of the piece because myinstinct tells me "Eat Pray Love" would need to be cleared. The Dear Rich Staff kind of missed the boat on Eat Pray Love. It's not that we don't like Chicklit or RomComs or Julia Roberts (We felt bad for her when she broke up with Kiefer Sutherland ... and then felt happy for her when she started dating Jason Patric because he was so great in that Kathryn Bigelow vampire movie). Anyway, we're glad you found the movie (or book) inspiring enough to write a piano solo. (This movie might inspire us to write a song, however.)
Right, you had a question. From a purely legal POV, there's nothing preventing you from calling your composition Eat Pray Love or from stating that it was inspired by Eat Pray Love. Many artists have named compositions after books and films (and vice versa). But you will run into problems if you imply that the owners or creators of the book or movie somehow endorse what you're doing. That might be the case if you have included an image of the book cover or a picture of Julia with your sheet music or performance. You also may run into problems if buyers are confused with the song that's become associated with the movie.

When Will the 1-Year Grace Period for Patents End?

2011-10-03T06:00:00.000-07:00

Dear Rich: I filed a provisional patent application this week. I've been selling my product that I hope to patent for the past three months. The new patent law ends the one-year grace period. So where does that leave me and my application? You should be fine, provided that you file your regular patent application within a year of the provisional filing. The aspect of the law that you're referring to doesn't go into effect until March 16, 2013, and only applies to patents filed on or after that date.
What about the one-year grace period? The one-year grace period -- which allowed applicants to obtain patents even if if they had been selling or had published their patent less than a year before filing -- will terminate (with some exceptions) on March 15, 2013. As David Pressman, author of Patent It Yourself, recently explained in his excellent analysis of the America Invents Act:

"The one-year grace period has been decimated so that any publication, public use, or offer of sale of an invention before an application’s actual filing date will bar the application. An exception: if the actual inventor-applicant created the publication and it was made up to one year before the filing date, it will not bar the application. However it is still unwise for an inventor to publish before filing since they will lose their foreign filing rights and another person may see the publication and file their own application on it before the true inventor files, thus requiring an expensive and uncertain derivation proceeding."

Check out the article for more details, and for more on the AIA, you can read about the USPTO's implementation plans, and you can review a timeline for AIA implementation.