Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Dear Rich: I have a question. I have coined a phrase that I predict will be adopted as the catch phrase for a political and economic era that is quickly approaching. I would like to claim credit for coming up with this phrase, but prefer it to manifest itself, rather than seeding the media with it. Is there any means of laying legal claim to a phrase only -- when there is no product associated with it? If so, would registration ever entitle me to any sort of monetary gain? I'm so glad you asked. The short answers to your questions are, "No," and "I don't think so."

Copyright law won't protect short phrases or slogans because they are considered "de minimis," or too small to qualify for copyright. (I've put together a helpful article on the subject.) However, if you use the phrase in connection with a product or service, you may be able to protect and federally register it under trademark law. The rights you acquire under trademark law would (with the exception of famous trademarks) allow you to only stop others from using it on competing services or products. In rare instances, movie companies have stopped the use of well-known phrases such as "Me Tarzan, You Jane," or "E.T. Phone Home" on merchandise (even though the Dear Rich staff maintains that the latter phrase was never used in the movie). In summary, there is no type of registration that will protect the phrase unless it is used in conjunction with a product or service. (By the way, the Dear Rich staff once met the man who claimed to have coined the phrase, "Let's Go Mets" -- a claim that the staff later sadly learned was subject to dispute.) 

Dear Rich: I have a question. I'm a seamstress and like to make movie replica costumes. Is it illegal for me to provide an offer such as "Sweeney Todd replica costume" or "Satine from Moulin Rouge replica costume". If your costume replica looks exactly like the movie version, could the costume designer of that film win a claim of infringement? I'm so glad you asked. The short answers to your questions are "No," and "No." As you may remember from a previous post, it is illegal to sell unauthorized character costumes such as Mickey Mouse or Barney. But there's a subtle difference between that and duplicating a costume worn by a character in a movie. Although characters have an identity, persona, and other expressive elements, clothing, by itself, is considered a useful article, unprotectable under copyright (a principle that's proven a major irritant for clothing designers). In a 1989 case, a court of appeals refused to protect costume designs even though the company had registered its costumes as "soft sculptures" with the Copyright Office. Other decisions reinforced the rule that costumes are not protectable. There may be instances where a movie company that owns a series such as Indiana Jones could complain that your costume sale -- for example, hat, jacket and whip -- could violate trademark laws if you used the name of the character in your advertising. That would probably not be an issue in the examples you provided since Sweeney Todd and Moulin Rouge are both public domain stories. To be safe under trademark principles, avoid any advertising statements that imply endorsement or an official connection with characters or films. Disclaimers, though not always effective -- for example "Not affiliated with Paramount Pictures" -- may help as well. Good luck in your costume business and best wishes for a happy new year from the Dear Rich Staff!

Dear Rich: Do you know of or have you heard of IP enforcement insurance? We have been contacted by a broker who is selling enforcement insurance along with  protection insurance against third party claims. Are these companies legitimate? Should I be suspicious? They want a hefty nonrefundable "assessment fee" to asses the risk of insuring our company. This fee is not credited against premium payments. I'm so glad you asked. The short answers to your questions are, "yes, I have heard of them," and "yes, they are usually legitimate," and "yes, you should be suspicious of any insurance offer."

The policies that are available for patents, copyrights, and trademarks come in two forms: defensive insurance that pays for attorney fees, settlements, and judgments (up  to your policy limit) if you are sued over your IP property (that covers the 3rd party clams); and offensive enforcement (or abatement) insurance that pays part (or all) of your expenses if you sue an infringer. Enforcement policies are more popular among smaller entities with patents who cannot afford the hefty fees associated with patent litigation since the average cost of a patent lawsuit is reported to be $2 million (and often much more).

IP insurance companies screen potential customers to make sure the coast is clear regarding the patent or copyright they will potentially enforce. Among the issues you need to consider are whether the company lets you choose your own counsel, how much the company is entitled for reimbursement out of any final judgment or settlement, the company's rating, and of course, the premiums and upfront fees. (Sometimes these companies may help you successfully stop infringers, but you won't see much money from the effort.) One alternative when you can't afford to enforce your IP is to find an attorney that will take your case on contingency (and make sure to review the fees carefully). The Dear Rich staff cannot recommend or endorse any of these companies, but you can learn more about the subject at the IP Frontline site or at 2XR.

P.S.: Before considering any insurance, check your business liability policy to avoid overlaps.

Dear Rich: I have a question. Is it possible to write a piece of software that shows a patented device? For example, let's say I want to write a software application that shows a match on the screen, and when I click on the match, it lights the match and burns out. Would this infringe on the patent? I'm so glad you asked. The short answer is no. You can only infringe a patent if you make, use, sell, offer to sell, or import the patented device without authorization.

Displaying images of an invention or  explaining how an invention works doesn't infringe the patent, although there are two related concerns. It's unclear whether patent drawings -- the drawings included with the application (see above -- Patent No. 6,293,874) -- are protected by copyright. (Although there is no clear ruling, caselaw and federal regulations seem to indicate they are protected.) So, you're best served by having someone re-create the drawings unless you want to make a case for fair use.

Second, you can use the trademarked name of a patented invention without permission if it's for informational or editorial purposes --  that is, you're not using the trademark to sell something, or to confuse consumers. The same is true for trademark logos and designs (although, you should avoid any alterations to those visual images).

In any case, the patent division of the Dear Rich staff is excited about your software and its benefits --- after all, in the case of dangerous inventions like matches, the user can see how the invention operates without the potential hazards. (Let's not even think about all those inventors killed by their own inventions?)

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: I have a question. I have an online flute consignment shop. I have created a link where I would like to make a piece of sheet music from the public domain available for free download each month. I could go to the local university Fine Arts library and copy music out of old books (which will look like scans of old music), or I could download the same piece of music from a free online source that is already in existence and have it be clean and pretty because someone took the time to typeset it and make it nice to read (I cannot possibly typeset this music myself... for many reasons). But I do not know if this is either legal or ethical. In some cases, there are footnotes that say something akin to, "Not to be used for commercial works." In other cases, there is no such notation. Can I take the music from one of these sites and give it away as a download on mine? I'm so glad you asked. The short answer to your question is that you can legally use public domain music provided that the musical notation you mention is obvious, routine, dictated by musical convention, and does not involve any major changes or new arrangements. In other words, if the notation is simply what's typically required to write the music, it's not protected by copyright.  Wait... was that the short answer?

Okay, just in case you need some backup, the musical division of  the Dear Rich staff consulted with Stephen Fishman, an expert on the public domain. According to Steve, it doesn't matter if it takes great skill or musical training to create the musical notation of public domain sheet music; nor does it matter if the end result is digitized. The work may only be protected by copyright if the sheet music contains substantial additional music, is an abridgment, or involves making a new arrangement -- for example, creating a suite for several instruments with harmonizations not previously associated with the public domain work.

How then can a music publisher claim copyright in public domain sheet music? According to Fishman, many claims for copyright in public domain music are improper and based on the fact that music publishers have a strong economic incentive to convince the public that its music is copyrighted (even when it is not). Of course, this information won't prevent you from being sued; it just means you're likely to prevail if there is a lawsuit. In addition, it may sometimes be difficult to separate the public domain version from a popular derivative version -- as in the case of the folk song "Tom Dooley". (By the way, the rules described here may not be the same outside the U.S.)

As for your question about whether the copying is ethical, the Dear Rich staff is unable to comment as they are trained only to wrestle with legal issues. However, you may find some advice here.

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: I have a question. My company does photography for letting agency websites. We want to sell the pictures to different online clients. Do we own the rights to do what ever we want with the photos? I have read your blog on whether you need permission to publish pictures of buildings but I need to know if we can sell interior and exterior pictures. I'm so glad you asked. The Anglophile Dear Rich staff informed me that "letting agency" is Brit-speak for a company that handles apartment leases. We must therefore caveat our advice here: the Dear Rich blog is limited to discussions of U.S. law.

Dear Rich: I have some questions: Are old newspaper and magazine columns copyrighted? Is commentary that is printed in newspapers or magazines copyrighted? How about historical photographs? If so, how much can you use (under fair use) in a documentary without getting sued? I'm so glad you asked. The short answers to your questions are: 1) Yes, unless (a) published before 1923 or (b) published between 1923 and 1963 and not renewed. 2) See previous answer. 3) See previous answer. 4) There is no fixed formula for fair use.

Fair use depends on several factors, including whether your use is transformative (you are copying the work in order to make a point -- for example, criticism or parody), the amount and substantiality of the portion borrowed, the nature of the work -- for example, fiction or nonfiction -- and the effect of the use on the market. Practically, you are better advised to read how the law is applied in cases such as the recent suit permitting the use of John Lennon's "Imagine" in a Ben Stein documentary. You can review case summaries at the Stanford Library Fair Use website.

Dear Rich: I have a question. Why are ringtones the same price or even more than the cost of buying a digital download of a song? After all, you're only getting one-tenth of the song. Isn't the use of a small portion of a song a fair use? I'm so glad you asked. The short answers to your questions are, "because the marketplace allows it," and "sometimes, but not in this case."

Considering that ringtones (also known as mastertones) account for about $9.4 billion in music business revenue, you can understand why digital download dispensers like iTunes are maxing the price. (And you can also see why these companies would want to prevent simple hacks that could kill the golden goose.) Also, the Copyright Office has legitimized ringtone sales -- its decision to classify ringtone downloads as "digital phonorecords," and its fee rates for ringtones (as the New York Times reported) have caused the price to rise. Statutory fees for ringtones are almost three times as much as those for songs. For example, iTunes must pay 9.1 cents to transmit each download of "Cretin Hop," while the statutory fee for transmitting a ten-second ringtone of that Ramones classic is 24 cents.

As for fair use, it's hard to claim that bothering everyone on the bus with snippets from "Hot for Teacher" amounts to "purposes of commentary and criticism." Therefore, the Dear Rich staff has concluded that the use of ringtones does not amount to fair use.

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: I have a question. If someone wants to entertain professionally at parties wearing an officially licensed Disney costume, is that a violation of Disney's rights? If so, why does Disney retain rights to control how the costume is used after it's purchased? I'm so glad you asked. The short answers to your questions are, (a) yes, and (b) they don't retain rights over the costume; they do retain rights over how a character is commercially exploited. (By the way, Disney also goes after those who buy and sell unauthorized character costumes.)

Although it may seem like anyone who buys a costume should be able to wear it and entertain for money, that's not the way the owners of licensed characters view the situation. Perhaps it would help if you step back and consider a few hypotheticals, as lawyers often do. Let's say that someone buys an official Mickey Mouse costume and then uses that to make a movie about Mickey Mouse. I think most people who read the Dear Rich blog would agree that purchasing a licensed costume doesn't entitle you to make a movie about the character. The same would be true for a stage play about Mickey Mouse. Ditto if a nightclub comic created a show built around the Mickey Mouse character (wearing the licensed costume). Entertaining for money at a party is a variation on this. The stage is much smaller, but the commercial intent is the same, and such exploitation -- which has become a popular home-based business -- likely violates copyright and trademark law. There's nothing wrong with wearing the costume for Halloween or attending parties, but when you create a commercial enterprise that exploits the character, the copyright owner views that as an infringement.

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: I have a question. A private Christian school wants to record their students singing traditional Christmas songs, some public domain, some not. They want to sell the CD to the parents and supporters of the school as a fundraiser. Is there any problem with this? I'm so glad you asked. The short answer to your question is, "Maybe." Recording and duplicating a copyrighted (non-public domain) song is an infringement and not likely to be considered a fair use. Under the law, the owner of the song copyright could hassle you and make you stop your distribution. Of course, as with all minor infringements like this, the question is raised: "If a Christmas tree falls in the forest, will anyone hear it?" In other words, if your infringement is so minor, transient, or trivial, will the copyright owner find out about it (and will they care if they do)?

Here at Dear Rich headquarters, we can't answer that question. If you're willing to take that route, you can probably do nothing and the world will continue to turn without interruption. But our friendly staff can tell you that it's fairly easy to avoid any potential legal entanglements and get permission for most copyrighted songs. It involves paying a fee at the Harry Fox website and using their Songfile system. It's quite easy to do. You pay 9.1 cents per song per unit plus a per-song processing fee of about $15. So if you duplicated 1000 copies of "The Christmas Song" (see above) your fee would be $106 for that song. By the way, if you use a commercial CD duplicator, that company will require you to check a box to the effect that you have this permission. 

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: I have a question. I am starting a fan club for a local racer under his parents' request, and this kid is going to make it big. We have already been invited to NASCAR, but that will be at least 3 years away. His family and I want to protect any merchandise from being pirated and his name being used without his permission. We want exclusive rights to produce any merchandise with his name, car, logo, or anything associated with him. What do we do to make sure that he reaps all the profits and not someone just looking to strike it rich off of his fame? I'm so glad you asked. The short answer to your question is that there's no short answer. The local racer -- assuming he's over 18 -- controls all rights to his own publicity or merchandise under legal principles known as the "right of publicity." (If the racer is not over 18, the parents and the racer can sign over these rights, but the Dear Rich staff recommends a new agreement be made once the racer reaches the age of majority.)  So, it's up to him to decide who has the right to use his image and name, and it's up to him to pursue the bad people who use those rights without permission.

Once he enters the world of NASCAR, he will probably be required to assign (give up) most of those rights to NASCAR and his sponsor. NASCAR drivers make money in three ways: they get a percentage of prize money, a percentage of merchandise sales, and earn money from personal endorsements. It's all part of the modern racing world. (BTW, here's a blog where you can learn a lot of fascinating stuff about the business of NASCAR.)  There's an upside to these deals as well, since the team sponsor or NASCAR will be out there purusing the bad guys (which can be very expensive and time-consuming). Also, keep in mind that should this racer become a superstar, he will be able to set the terms of the deals and choose his sponsors.

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: I have a question. A book was recently published featuring houseboats from my area. A photo of my houseboat is in the book. I know the photographer and told her verbally that I did not want a photo of my boat used commercially or in a book. She used it anyway. Is there any way to take legal action against her? I am very upset! I consider my boat to be a sculpture. I'm so glad you asked. The short answer to your question is "no." As you are probably aware from reading the Dear Rich column, it's not a violation of copyright law to photograph architecture (even aquatic architecture) that is publicly viewable. And thanks to Batman, that's true even if those buildings are protected by architectural copyright and contain separately protectable sculptural elements.

As aesthetically pleasing as your home may be, it's not likely to be held as copyrightable sculpture. Costume designers took a similar approach a few decades ago -- they characterized their designs as "soft sculptures" -- in a failed attempt to get around the government's refusal to register clothing designs. The Dear Rich staff happens to be big fans of the creative and eclectic houseboat community and wish you the best in your floating home. But unless someone: (1) takes a photo that invades your privacy -- for example, someone using a telephoto lens peers into your home and captures you and your family; (2) trespasses and damages your houseboat-- for example, someone sets it on fire for a reality TV show; or (3) uses photos of your home as part of a movie's set (or similar commercial endorsement) --  they're probably not violating the law.

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."

Dear Rich: In 1982, I purchased all rights to a video tape from a "celebrity" of the 1970s (now deceased). With the celebrity's assistance, we used the video tape to make a documentary of the celebrity's life and times. I own copyright to the documentary. The celebrity's family owns the trademarks to the celebrity's name. The name of the celebrity is in the title of my documentary. Am I infringing on the celebrity trademark? I'm so glad you asked. The short answer is "probably not." As a general rule, you can use a trademark (or celebrity's name) for editorial or informational purposes without infringing. Such uses do not require permission because they inform, educate, or express opinions protected under the First Amendment. For example, "Super Size" is a trademark of a big burger conglom and is used in the title of a documentary. (Speaking of documentaries that use McTrademarks, the Dear Rich staff really loved "McLibel"). "Sinatra" is also a federally registered trademark and is used in documentary titles; ditto for James Dean and Marilyn Monroe. The laws protecting celebrity names and likenesses only go so far and you will likely  run into problems if you sell goods or services using the celebrity's name or image, or if you imply the endorsement of the celebrity for any goods or services.  

Got a question for Dear Rich? Send it to dearrichquestion@gmail dot com, and make sure it has the header: "Question."