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

All Federal Works in the Public Domain (NOT!)

2009-07-03T18:01:19Z

Dear Rich: Are all works created by the federal government or agents of the federal government automatically in the public domain? Specifically, when the Inauguration Committee commissioned John Williams to arrange "Air and Simple Gifts" is this new work automatically in the public domain and is the recorded inaugural performance also in the public domain? The short answer to your question is that no, not all federal government works are in the public domain. Those created by federal employees and federal officers in the course of their duties are in the public domain; but contractors who create federal government works sometimes reserve copyright in their work. According to public domain expert Stephen Fishman, it all depends on what the government decides at the time the independent contractor is hired. If the government wants the work to be in the public domain, it can require it; otherwise, the contractor would own the work that's created. That seems to be the case with John Williams' Air and Simple Gifts which is owned by Williams' publisher Warner-Tamerlane/Marjer Music Corp and can be licensed for reproduction from the Harry Fox Agency. You may also be interested to know that the underlying theme of the piece is borrowed from a shaker hymm, "Simple Gifts" (The Dear Rich Staff assumes that Williams contributed the "Air") "Simple Gifts" was also used by Aaron Copland in his Appalachian Spring. Okay everybody, have a safe Fourth of July. You don't want to have to call on the PI lawyers! (And has it really been a year since we posted this?)

Using Amazon Reviewer Quotes on Product

2009-07-02T14:43:25Z

Dear Rich: Can I use the text and names of people who review my product on Amazon? I'd like to put it on our product packaging. The short is answer is 'No.' Even though the reviewer has given Amazon the right to reproduce the content and reviewer's name under Amazon's Conditions of Use*, they haven't given you the same rights. Using the review without permission could open your company up to a claim of violation of the right of publicity or copyright infringement. We normally might not be this paranoid, but companies that sell products are easy targets and the last thing you would want is to recall your packaging in order to accommodate a court order.

Possible workarounds?

Some possible workarounds are to contact the reviewer (usually, there's a way to communicate if you click on the reviewer's name) for permission (an email permission should be fine). If that's not possible, using one or two lines from the review is probably permissible under fair use principles -- although, again, the Dear Rich Staff would counsel against using the reviewer's name without permission.

*Speaking of Amazon's Conditions of Use ... You might want to think twice before posting a bad review of that new Lindsay Lohan movie. As an Amazon reviewer, you agree to pay for Amazon's court costs and damages if a lawsuit is filed as a result of your comments! Ouch!

Car Used in Graphic Novel

2009-07-01T17:28:37Z

Dear Rich: I'm working on a graphic novel/comic book. One of the characters will be driving a vehicle of a highly recognizable make and model. Are there legal issues in doing this? If needed, I could alter the car to the point that it's more generic. The short answer is that you're okay using a popular make of automobile in your graphic novel or comic (that's why they call them car-toons) or in most any type of fictional or "editorial" work (remember Stephen King's use of a red Plymouth Fury as the villain in his novel, Christine?). A car manufacturer may battle other manufacturers over the appearance, but those design patent or trade dress rights -- for example, the C-scoop on a Ford Mustang -- are rarely asserted against editorial uses. You may run into a problem if you use the image of the car on the cover of your work, or in the advertising and it creates the impression that the manufacturer is associated with or endorses your work. And you probably shouldn't offer merchandise -- for example, a miniature replica of the car. Of course, the use can also be lucrative if you partner with a car company or get involved in movie and TV product placements. The Dear Rich Staff recommends that if you want to avoid any potential C&D correspondence, use a car that's no longer in production and for which no manufacturer is claiming rights -- like our favorite anthropomorphic characters, Sam & Max (above), and their speedy customized DeSoto.

Using Posters from Cultural Revolution

2009-06-30T14:59:59Z

Dear Rich: My non-profit organization is developing a study guide that centers around the Cultural Revolution. We plan to use a number of propaganda posters from China in the 1960s in the guide. We're having a hard time tracking down the rightful owners of the posters to secure permission and we're wondering if it is because there are laws putting propaganda in the public domain. What do you know about propaganda and copyright? Also, what can you tell me about the Berne Convention and its affect on copyright? Aside from reading RIAA press releases, the Dear RIch Staff doesn't know much about copyright and propaganda. We assume your question is whether Chinese government-authorized posters created in the 1960s are protected by copyright in the U.S. The short answer is "probably not." One reason for this wishy-washy response is that for a period of two decades (from 1957 through 1978), China effectively had no copyright system. Commencing in 1979 and through 1990, the country adopted various copyright regulations and in 1991 China's current copyright law went into effect.

Current Chinese Law

Under the current Chinese law there is no exemption for government-produced posters although Article 5 puts certain government documents into the public domain. Article 59 of the Chinese law grants some retroactive protection to pre-1991 works but it is unclear whether this would provide protection for the posters. In any case. it's difficult to imagine the enforcement of copyright in Cultural Revolution posters -- whether produced by the government or independently by local Chinese artists -- as evidenced by the fact that none of the many books or websites reproducing these posters acknowledge copyright, or reflect any permissions for their use (check the Search Inside feature at Amazon). On that basis, you should not expect your study guide to be the subject of a dispute. ) We are also informed and believe (that's legalese for "we're pretty sure") that at the time these posters were created, it was considered "counterrevolutionary" for a contributing artist to make copyright claims.

What about Berne?

In answer to your second, question, the Berne Convention is an international treaty that standardizes copyright protection among the 100 member countries. Basically, any country that signs the treaty agrees to provide the same treatment to authors from other treaty countries as it does to authors in its own country.

Unauthorized Posting of Masters Thesis

2009-06-29T15:08:12Z

Dear Rich: My masters thesis was posted online (as a PDF document) without my permission. The thesis includes the copyright icon but was not registered with the U.S. Copyright Office. Is the online posting of my thesis an infringement of copyright? If so, how can I have it removed? The short answer to your question is that yes, the unauthorized reproduction of your thesis is an infringement and yes, you are entitled to have it removed (regardless of whether you have registered the work). However, whether it will be removed depends on a few factors -- most notably the site where it is posted.

The Key to Success

Usually, the most important element in achieving a takedown is locating the agent for service of the DMCA notice. Here's a list of designated agents. In addition to the designated agent (or if you can't find the agent) check the site for other forms of email (or other addresses) for the website owner. Sometimes, you can find it on a "Contact Us" link and often it is simply, "info@nameofsite.com." Many sites that post files or post documents have a special mailbox for dealng with infringements -- often that's "abuse@nameofsite.com" or "copyright@nameofsite.com." If there is no designated agent, and no email address for contacting the owners at the site (not a good sign), search for the owner using the database at Whois.net. If your search results in a "proxy" administrator -- a company that serves as administrator and hides the name and contact info for the owner, that's also not a good sign. Once you locate an agent, or email or mailing address for the administrator of the site, you should prepare and send a DMCA takedown notice. Here's an example. (One site has even automated the process.)

What if the Site Refuses to Take it Down.

The approach described above is usually effective -- at least it often works for the Dear Rich Staff. However, if the person who posted the thesis refuses to take it down (or they respond with the countermeasures we discussed in this entry), you will need to proceed with a copyright registration (you can expedite it) and file a lawsuit. Unless you are independently wealthy, that could be cost-prohibitive. If the website owner has deep pockets and you can demonstrate financial damages, perhaps you can find a lawyer who will handle it on a contingency.

Creating Logo Based on Building

2009-06-26T13:24:33Z

Dear Rich: I saw an article on your blog relating to permission to publish pictures of buildings. I'm currently designing a logo which is based on an iconic building in London. You probably need to know 'how much' it's based on the building, but what sort of ground am I on with regard to copyright? The short answer is that you may run into trademark problems (we're assuming your use for the logo is in the U.K,). Copyright is not likely to be an issue for you. The architecture for newer buildings is protected under U.K. copyright law (the life of the author/architect plus seventy years) but there is an exception (see section 62) that permits graphic or photographic representations for publicly displayed architecture. The Dear Rich staff is more more concerned about your rights under trade mark law (it's two words in the U.K.) A logo is intended to establish an association with a product or service. If the building you are using is already associated with a commercial enterprise -- for example, the TransAmerica pyramid in foggy downtown San Francisco -- then consumers may be confused by your use, or alternatively, a U.K. trade mark examiner, may reject your registration. A trade mark examiner may also reject the application if the use of the building implies royal patronage or if it is prohibited for statutory reasons. Since so much time and money is invested in a new logo (and particularly if you are creating the work for a client), it may be time to bring in the lawyers.

Can a Chapter Heading Infringe a Book Title?

2009-06-25T13:09:28Z

Dear Rich: I wrote a nonfiction book and it turns out that one of the chapters is the same title as a book on a similar subject. The person who wrote that book also has seminars and a DVD using the same title. I seem to remember that there's no copyright on titles -- but don't know how to make sure. Am I infringing? The short answer is 'No.' Copyright law definitely won't protect the book title. Trademark law (with rare exceptions) only protects book titles when used on a series of books. (The author could federally register the title for her seminars but she hasn't done so, yet.) Even if the author could prove she had trademark rights, she would have to show a likelihood that purchasers would be deceived, confused, or misled (yes, we know we could have said it with one word, but we're lawyers). Proving likelihood of confusion seems difficult since most consumers won't see your chapter heading until after they have purchased your book. All that said, the author or publisher may still fire off a C&D letter should they learn of your chapter title (and may even dredge up claims of unfair competition). If you're concerned about getting hassled, the Dear Rich staff suggests that in the short term, avoid using the chapter heading in promotional materials for your book; and in the long term -- assuming you do a second printing of your book -- change the heading.

Copyright in American Indian Photos

2009-06-24T13:12:06Z

Dear Rich: I've recently been using images from Edward S. Curtis' Portraits from American Indian Life. The book was published in 1972 and has a copyright for that date. Curtis died in 1952 and the book itself is now rare. According to the research I've done the photos themselves were under Curtis' copyright which was forfeited by his daughter and family when he died. Does the book publisher -- who no longer exists but supposedly acquired the copyrighted material from J. P. Morgan (to whom Curtis had sold the original copyright) -- still have the copyright to the material? If so, who do I need to contact in order to obtain perission to continue to use the four images I've used. I have reproduced his images by free hand as closely as I can. [Corrected 06/28/2009 -- Following our initial response to this question, Peter Hirtle offered three corrections. First, he reported that the Library of Congress considers all of Curtis' work to be in the public domain. Second, our dates were off by one year, as corrected below. And third, he reports that "[b]ecause the photographs were individually registered, renewal had to occur according to the date of registration. If they had never been registered, then renewal date would depend upon the date of first publication." Thanks! Check out Peter's copyright duration chart, here.]

The short answer is that you probably don't need to obtain permission from anyone to reproduce the images. Curtis' American Indian photographs were originally published in a series of books from 1907 through 1930. All of the photos in the books published before 1923 are in the public domain. The photos published between 1923 and 1930 are probably in the public domain since it estimated only about 11 percent of copyrights issued before 1964 were renewed. (We explain how to search Copyright Office records in this post.)

What if the copyright was renewed?

If the copyright was timely renewed in the 1923-1930 volumes, those photos won't begin dropping into the PD until 2027 (75 years from Curtis' death). You are probably familiar with the Library of Congress' digital reproductions of Curtis' work (the photo above is currently on loan to the Dear Rich Staff). One nice thing about the LOC project is that it groups the photos by year of publication.

What about your creations?

Since the work is in the public domain, you will own copyright in your contributions, though anyone else is also able to make free hand reproductions. As always, most of what we know about the public domain comes from Steven Fishman's engaging Nolo book and treatise.

Can a NonProfit Be an Invention Licensor?

2009-06-23T15:22:12Z

Dear Rich, I have a question. I have invented a very useful tool and have a patent pending. Also I have an arrangement with a nonprofit and some principals. The nonprofit will operate the business of selling the tool to generate revenue. The principals provide funding and agree to use their retail outlets for the sales. Can we license a manufacturer to manufacture only and license the nonprofit to sell the product? The short answer to your question is that we're not sure. Yes, I know that the Dear Rich Staff is packed with lawyers, but more information is needed. For example, we're concerned about maintaining your nonprofit tax benefits, and the value of your patent pending status, and we're not sure what you mean when you say you want to "license a manufacturer to manufacture only"? Do you mean versus manufacturing and selling? We're also not sure who controls the rights to the invention, you or the principals? In a situation like this -- when you're mixing investors, inventions, and 501(c) tax issues -- you're best off bringing an attorney to the table.

Our three favorite movies featuring patent attorneys

The Last Wave (1977)

The Man Who Fell to Earth (1976)

The Water Engine (1992)

Can I Use the Name From a Previous Business?

2009-06-22T14:47:12Z

Dear Rich: I started a business with a partner, we didn't get along, and it folded after six months (we just dissolved the S corp). We didn't register any trademarks. Do you see any problem with using the same name for my new sole proprietorship business? The short answer to your question is that your ex-partner may object and may have the legal basis to prohibit your use. Your ex may also have another concern -- that your use of the same name may create the impression that the two of you are still in business. The legal rules are as follows: the business name -- regardless of whether it's registered -- is an asset of the business unless there's an agreement to the contrary. Normally, when a business closes, the assets are divided and distributed to the principals (or creditors). The Dear Rich Staff recommends that you look through the termination paperwork to see how it deals with intangible assets. If you're not sure what happened to the name and you're now on good terms with your ex-business partner, perhaps you can enter an agreement signing off on any rights to the name. Otherwise, (1) see an attorney to verify your use, or (2) go ahead with your use of the name and wait to see what happens -- your ex may not be able to afford (or may not care enough) to bring a lawsuit. As always we can't predict the likelihood of such a dispute happening (even when we ask our crystal ball).

Idea to 'Monetize' Large Asset

2009-06-19T14:57:31Z

Dear Rich: There is a company that owns a large asset they have been trying to monetize for some time now. I recently came up with, what I believe is, a process that they can use to to do just that. After speaking with a few trusted friends who are consultants and non-IP lawyers they told me I should figure out how to protect the idea then try to strike a deal with the company. Is there some standard way to proceed in these situations? I have heard everything from contact an IP lawyer, send him two written outlines certified mail etc... to don't talk to the company about the idea over the phone. Thanks for any advice. As David Mamet explained in The Spanish Prisoner, there's no protecting a business idea if somebody is intent on conning you out of it. Start with the most important questions: What do you know about the company and what do you know about the people associated with the company? If they have a dubious reputation -- usually documented by lawsuits (and occasionally by movie scripts) -- save your time and money by moving on to your next big idea. If you do decide to pitch your idea, you can: (1) treat the idea as a trade secret and submit it only after a nondisclosure agreement is signed, (2) seek patent protection or 'patent pending' status (or at least have the idea reviewed by a patent attorney) or (3) submit the idea under the terms of an evaluation agreement in which case if the company later decides to pursue it, they'll grant a license in return for royalties. None of these will stop theft; they all provide remedies if your idea is stolen.

What If They Won't Answer Your Emails?

Be prepared for the fact that most companies are wary of signing an agreement with someone they don't know -- or they may make you sign an agreement waiving any claims. This doesn't mean you can't trust them; just that they're suspicious of strangers. The best chance for success is to find a person at the company who will speak with you, or find a person who knows someone at the company, or find an agent who represents people in your position. It's only through these people-to-people contacts that any business will get done. There are some suggestions on how to pitch, an evaluation agreement, and an agent agreement in the book, Profit From Your Idea. As for the homemade protective measures like mailing copies to yourself, don't bother unless you enjoy the thrill of getting mail. Finally, the Dear Rich staff understands your desire to speak in current biznez lingo but 'monetizing' is inappropriate slang for making a profit. (Its actual meaning is more specific.) When making a pitch, we recommend plain English.

Wedding Videography and Sync License

2009-06-18T15:58:23Z

Dear Rich: I'm thinking of starting a wedding videography business and I'm trying to find out if and/or when I need to obtain music license(s) for making wedding DVDs. Researching on the web has proven nothing but confusing. Some places say using any song under any circumstance is illegal. Other's say something along the lines of... the couple has the right to private listening/playing/performing these songs since the wedding is a private event. I'm not wanting to add the music (I have a production music library for that). I'm just wanting to know if any songs played or sung during the ceremony need licenses like what about if someone sings or plays Shania Twain's "From This Moment" during the unity candle. I even asked a lawyer about this and he said that because only a couple copies are made it's covered under fair use. I've researched fair use and don't think this qualifies. I'm not a lawyer, but if a lawyer doesn't make sense, you understand my apprehension? In order to distribute a DVD in which music accompanies a video, you need a sync license from the owner of the song. Good luck getting one. The Harry Fox Agency tried to organize a system for people like you and you can read about their attempts, here. In addition, if a DJ at the wedding party plays pre-recorded music (not a wedding band covering the song), you'd need permission (a Master Use license) from the owner of the recording (a record company). We assume you won't have the ability to research this stuff and enter into separate licenses for every song (even if you could get the music publisher or record company to take your calls).

Are you an infringer if you don't get a sync license?

Probably. Will you get caught? Probably not. Unless you're videoing a wedding in which someone from the RIAA marries someone from ASCAP, chances are good that nobody will know or care about your work. The legal advice you received may also apply -- if you are hassled, you may be able to argue that it's fair use but that depends on the four fair use factors, particularly the first and last ones. If you're looking for a jerry-rigged solution to your situation, you could obtain a mechanical license for the song from Harry Fox and if hassled, argue that you made these payments in lieu of any other system for compensation. The mechanical license is not intended to cover video but your payment would demonstrate your good faith (and the Dear Rich staff bets that a music publisher is more likely to back off if you took this route). What's the video clip got to do with your question? This movie has our favorite wedding music.

Does Home Sale Imply Photo Permission?

2009-06-18T02:17:54Z

Dear Rich: So, is an agent who is helping a buyer, who is not trespassing, who is invited into a home for sale (via a realtor ad), allowed to snap photos and publish them online for all to see, without specific expressed permission? Or is the permission implied with allowing 100+ buyers into the vacant home? Or is it a conditional invitation with limitations on rights to photograph? Just because you were invited on to someone's property, vacant or not, does not imply the right to take photos. The best argument you could make would be that the seller or the seller's agent was aware of you taking photos and didn't complain. (For example, the Dear Rich Staff was recently at the Google offices in San Francisco, taking a video of the free lunch -- it was pretty impressive stuff, gourmet pizza, fresh broccoli, incredible salads, and free wheat grass juice in these little shot glasses - until a Google rep explained that no photos were permitted. Okay we got the point even though we still like looking at the video when we're hungry.) The next question is whether permission is required. After all, permission is only needed if you are violating someone else's rights. Someone may claim your posted photos violate copyright law -- a long shot -- assuming there's something copyrightable in the photos (artwork on the walls?); or someone may possibly claim invasion of privacy (although if the house is vacant and hundreds of people are walking through it, that's a tough argument to make). It may be a violation of contract if ads for the home state "No Photos." It may violate someone's right of publicity (wow, check out this cool right of publicity site) if you photo them in the house and you use that photo to sell the home, blah, blah, blah. The real issue is why are you asking this? Are you being hassled because you're an agent who showed up at a home for sale, took pictures, posted them without permission? If that's the case -- and since agents need to work together cooperatively in most communities (especially in a tough real estate market) -- don't you want to work this out with the people you are dealing with on a day-to-day basis? It's always more satisfying to "get to yes" without bringing in the legal blowhards. (What's the movie poster got to do with your question? There are a lot of vacant homes for sale in New Granola.)

Database Protection and Licenses

2009-06-16T14:45:07Z

Dear Rich: I have a two-part question. Part 1: I'm developing a website whose main feature is an online database that contains (in part) original material written by me. What kinds of notices, user terms and agreements should we have to protect the database and its contents? Part 2: The site publisher is a partnership, but one of the two partners retains copyright to the database and its contents. Should there be a license agreement between the database author-partner and the partnership itself? This article is a good summary of the legal maneuvers used to protect databases. The most common strategies are to:

register the database with the Copyright Office (assuming it is protectible -- see Circular 65),
require that users enter into a click wrap arrangement which grants them limited rights and guarantees your rights to go after those who copy data without authorization, and
treat the database as a trade secret and require that employees and contractors working on your site enter into nondisclosure agreements.
Can You Really Prevent Theft?
These legal measures provide tools for chasing down thieves and recovering damages. They may discourage theft but none can prevent it. (Websites can be 'scraped' and databases copied.) . As for getting the proper language for your click wrap, start by looking at click wraps for similar sites, or by checking Steve Fishman's book.
Get a License?
Yes, the owner of the database should enter into arrangement with the other partners. A license makes sense because you can contribute the database to the partnership and still retain copyright ownership. You may have to determine the value of the license to assess your partnership contributions and partnership taxes. An accountant's help may be necessary. (Check out this Nolo book or software program.)
What's the Picture Got to Do With Database Protection?
We're not sure; the Dear Rich Staff reports that it's from their favorite movie about eavesdroppping and clogged toilets.

Can You Patent Something Invented by a Machine?

2009-06-15T14:27:21Z

Dear Rich: Can you patent an invention that was designed by invention software? How much human involvement is required to be considered to be invented by humans? Can an invention created by invention software be considered nonobvious under patent law? We wish we had the answers to these questions but fortunately we know someone who does. Attorney Robert Plotkin has written a book, The Genie in the Machine: How Computer-Automated Inventing Is Revolutionizing Law and Business and the Dear Rich Staff interviewed him as part of the Nolo podcast series. You can listen to Robert Plotkin's answers here.