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

NASCAR and publicity rights

2008-11-20T20:02:57Z

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."

Your houseboat, my scuplture

2008-11-16T18:05:32Z

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."

Celebrity Trademarks and Documentary Rights

2008-11-01T18:17:39Z

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."

Showing Book Covers in Movies

2008-10-23T00:36:14Z

Dear Rich: My company is creating an educational DVD in which a child reads a book out loud (the book is depicted in only a positive way). Is it necessary to get permission to show the book's cover? Is there a certain amount of time (i.e. a few seconds) that we could show the cover that would be considered "fair use"? I'm so glad you asked. The short answers to your questions are: "Probably" and "No". There is no fixed time period which qualifies for fair use and although we believe that a few seconds of a book cover should qualify as a fair use... unfortunately it will require a court case to prove it actually is a fair use. (The Dear Rich staff has provided considerable advice on fair use here.) Showing the book in a positive manner may discourage a claim but it doesn't get you off the hook if you are pursued. To be prudent you should probably ask for permission. What's not mentioned in your letter is whether you have permission to read the book. The Dear Rich staff doesn't want to bring your head down, but reading a book aloud in a movie would be considered a public performance and without permission (or a fair use defense), it's an infringement.

Which reminds us that once, not so long ago, a big-time movie company asked permission to use a Nolo book in a big time movie with one of the Dear Rich staff's favorite actresses!

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

Register a Song Copyright Using Form CO

2008-10-17T23:49:18Z

Dear Rich: How can I register a song copyright using the new Form CO? I'm so glad you asked (see above). You can also register using the new eCO system -- the Dear Rich staff will have a video on that process in a few weeks.

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

Process Patents and Cigarette Papers

2008-10-09T21:46:22Z

Dear Rich: Is it possible to patent a method of sale for a product component? For example, let's say cigarettes existed but nobody had ever separately sold cigarette filters and papers. Would a system for selling such product components be patentable? This may be a bad example, but what I'm trying to find out is whether I could patent the way a particular product is sold by breaking it into separate parts and giving the consumer a more tailored choice. I'm so glad you asked. The short answer is 'probably not,' and yes, your analogy as to the novelty of component sales of filters and cigarette papers may not be a good one.The Dear Rich staff consulted with patent attorney David Pressman, who said that since the method doesn't transform physically and is not tied to technology, it would not qualify as patentable subject matter. The Federal Circuit, a federal appeals court for patents, is currently considering In re Bilski, a case that could affect your situation. Bilski is a dispute over whether a computer model that assesses risks for hedge funds (how timely) is patentable. The USPTO held that the process was not patentable because it is not tied to a particular machine, nor does it transform a tangible article to a different state. If the Federal Circuit upholds this standard, your process claim (and many other business methods) will not be considered as patentable subject matter. If the Bilski case is reversed (it can be appealed to the Supreme Court), your process is novel, and it provides a new and unexpected result, it may be patentable.

No Perpetuity in Copyright

2008-09-30T18:41:52Z

Dear Rich: What does "perpetuity" mean in the case of a music publishing contract? I have a friend who signed a deal back in the sixties with a company that doesn't quite seem to exist anymore. The contract says that it is in perpetuity. He has never earned a dime in mechanical royalties. I'm so glad you asked. Perpetuity means forever. U.S. postage stamps and Batman may be forever, but not grants of copyright. If the music publishing deal was signed before January 1, 1978, the copyright owner can terminate it 56 years from the original date of copyright. So if the song was first published in 1960, the deal could be terminated in 2016. Although the Dear Rich staff can't vouch for their reliability, there are companies such as LegacyWorks that will assist you in the termination process.

Your friend may not have to wait until then to terminate. If the company has failed to account for mechanical royalties -- payments that the song writer is entitled to whenever copies of the song are pressed on records or CDs -- then a lawyer may be able to sue for breach and terminate on that basis. It's also possible that the company went out of business, in which case your friend could sue the successor (the company that took over rights). If no company has taken over rights, a lawyer may be able to get a legal declaration that the contract is void. Your friend should also check with the performing rights societies -- BMI and ASCAP -- to make sure that performance royalties from radio and TV are paid. These royalties do not have to go through the publisher and should go directly to the songwriter.

Your adword is my trademark!

2008-09-28T00:55:46Z

Dear Rich: I have a question. I own a small service business. A few months ago I registered my trademark. I intend to advertise via the Internet but I heard that under Google's trademark policy, bigger competitors can outbid me for the search engine rights for my trademark. So, when possible customers type my trademark in the search bar, the website will display my competitors. Is that legal? I'm so glad you asked. Yes, Google's trademark policy permits the sale of your trademark as a keyword (or in Google's case, an 'adword'). (For readers who are unaware, keywords/adwords are words or phrases sold by search engines to advertisers. When a searcher types the adword into a search engine, an advertisement related to the adword appears on the search results page.) In the case of Google, the purchase of keywords has no effect on actual search results, only on the paid advertising that appears on the right side of the page or above the search results within a colored band.

To give you an example of how it works, many of Nolo's competitors have purchased the keyword "willmaker," which Nolo has registered as a trademark for its estate planning software. If you type "willmaker" into Google, a series of ads from Nolo competitors will appear on the right side of the search results page. (As a practical matter, if you complain to Google, Google will usually remove ads that contain your company's trademarks within the text of the advertising.)

You're not the first person to complain about the keyword/trademark practice. The key issue, as with most trademark disputes, is whether consumers are confused and so far, U.S. courts have not found the practice to be confusing. For example, one court held that consumers were not confused by Google's sale of the keyword Geico, and another permitted Google's sale of the keyword Rescue.com (PDF). The issue becomes more complex outside the U.S. In France, a court ruled against the practice in 2005. Of course, some trademarks may not trigger any ads. The Dear Rich staff is sad to report that when you type "Dear Rich" into your engine, not one advertiser appears.

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

Visually-impaired website access

2008-09-17T00:23:13Z

Dear Rich: I have a question. I read about the Target lawsuit and I wanted to know the rules for websites that must be accessible for the blind. I'm so glad you asked (and you're not the only one to inquire). The lawsuit between the National Federation for the Blind and the Target retail chain was settled last month. Until this lawsuit, many retailers believed that the Americans with Disabilities Act (ADA) defined "places of public accommodation" as physical stores, not websites. However, a 2006 federal court decision held that sites that accommodate the public with goods or services are also covered by the ADA (as well as by the California Unruh Civil Rights Act, and the California Disabled Persons Act).

To comply, you should avoid doing what Target was doing: (1) Target didn't have "compliant alt-text" which is embedded text that describes an image. (Visually-impaired users have computers that can vocalize the description.) (2) Target's website contained image maps and other graphical features which are inaccessible to the blind. (An image map is a picture containing multiple links--for example a map of the U.S.) (3) Finally, Target shoppers could only complete a sales transaction using a mouse -- visually impaired users must use a keyboard. You can read all of the web accessibility guidelines at the W3C site. By the way, the Dear Rich staff also wants to report that Congress approved an amendment to the ADA this week that will broaden the definition of disabled persons to include "individuals who could compensate for their disabilities with medications, medical devices or prosthetics" -- a group that the Supreme Court had previously excluded from ADA coverage.

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

Can I use a song for my political fundraiser?

2008-09-10T00:48:44Z

Dear Rich: I have a question. I will be having a political fundraiser for a candidate and I want to play "Blame it On Cain" by Elvis Costello before I introduce the main speaker. About 500 to 1000 people will attend. We're not making any money on the event, just taking donations. Do I need to get permission from anyone? I'm so glad you asked. If the venue at which you are holding your fundraiser has an ASCAP license, then no, you probably don't need to get permission. (An ASCAP license covers public performances of songs by ASCAP-songwriters like Declan Patrick MacManus.) If the venue doesn't have a license, or their license doesn't include your type of event, you'll need to obtain an ASCAP license. (Songwriters who are not affiliated with ASCAP are usually affiliated with BMI.) Of course, if you're hosting a national event, you may want to get the okay from the songwriter to avoid any negative post-fundraiser blowback.

If you do anything other than play the song, you'll need more. For example, if you create a political video using the song, you'll need a sync license. If you use the recorded song as part of an ad campaign, you'll need other permissions, including one from the performers (under a principle known as right of publicity.) By the way, the fact that your fundraiser is nonprofit or for-profit won't make much difference in terms of your permissions. The Dear Rich staff could go on and on about these rules (we did write the book) but this Slate article says it more succinctly.

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

Does my domain name infringe your trademark?

2008-09-01T23:28:18Z

Dear Rich: I have a question. I own a domain name -- let's just call it gamingaus.com. I found out that someone has registered the trademark gamingaustralia.com. Would I be infringing their trademark? I'm so glad you asked. The short answer is "probably" (based on the assumption you are both offering gambling services and the fact that the names are fairly similar.)

The billable answer is that many variables arise when choosing a domain name similar to an existing trademark. For example, you may be able to use your domain name if you can show that consumers aren't likely to be confused by the two names, or that you are the first (or "senior") user, or that you are not offering the same services. Say, for example, the other company offers gambling services and you offer "gaming" services (in which you assist in the removal of some species of Australian vegetation). Or, perhaps your site helps people with "gaming" the Medicaid system. If those arguments fail, there's always the possibility that you could challenge the trademark registration on the basis that it is "merely descriptive" (or the generic term) for what the service offers.

The fact is that even unrelated services -- say, wildlife preservation vs. pro wrestling -- can trigger problems. You'll also get hassled if you acquired the domain name primarily to profit by selling it to the other company. The Dear Rich staff would recommend you err on the side of caution, since gambling enterprises are usually well-funded and unafraid to litigate -- or, as our staffers put it: "the bigger the headache, the bigger the pill."

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

Do you need permission to publish pictures of buildings?

2008-08-21T15:42:17Z

Dear Rich: I have a question. Do I need to ask permission to publish a picture that I took that contains several local buildings and a city cultural monument? I'm so glad you asked. The short answer is "probably not". Here's the scoop.

If you took the picture, you own the copyright (with exceptions, if you were hired to take it). As for the copyright in the buildings, it's true that architecture created after 1990 is protected under copyright law, but that's not an issue for you because there is an exception that permits you to photograph and publish constructed buildings that are publicly viewable. (That's not true if you must trespass on private property to photograph the building.) Even if the building contains sculptural elements like vampire figures, you can still photograph those elements and even use them as part of the backdrop in a Batman movie. (I'd refer you to Circular 41 -- Copyright Claims in Architectural Works -- for more information, but the Copyright Office is currently updating it.)

The city monument may be a different copyright issue. If it has been around for more than 85 years, it's most likely in the public domain (and even if it's newer than that, it may be PD as well -- see Fishman's fab PD Nolo book or his new treatise for more info). Post-1923-created monuments may be protected under copyright law, in which case, you can expect to get hassled (though public pressure can always change public policy). Generally, you don't need to worry about a lawsuit over photos of public art unless your use is blatantly commercial -- for example, in a movie, TV show, or on a poster.

There's a minor hiccup when it comes to trademark law. Building owners have claimed building appearances as a trademark when used in connection with the sale of goods and services -- think White Castle and the Sears Tower. But in order for a trademark owner to stop you, the following would have to be true: (1) the building would have to have an identifiable, distinctive appearance; (2) the building would have to be publicly associated with certain goods or services; (3) your use would have to be commercial (not editorial); and (4) your use would have to be linked to an offer or endorsement of similar goods or services. For example, you will run into problems if you use a picture of the Transamerica Pyramid in an ad for another company's financial services. Generally, this strategy hasn't always fared so well for trademark owners, and you probably won't need to worry about it. If you are concerned -- for example, you're working for an ad agency or movie company -- obtain a release for your photography. (There are property releases in my book on getting permission.)

Actually, the biggest hurdle for photographers in public spaces is a national paranoia following 9/11, as exhibited by building owners, employees, and security guards. Photographers of public spaces are now considered suspect even when taking pictures of their own kids. Anyway, feel free to come by and photograph the Nolo building before the company is moved out of town. Or better yet, feel free to shoot the Dear Rich Building (see above) anytime -- the Dear Rich Staff will even take you on a guided tour.

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

Can your name be a trademark?

2008-08-07T14:42:49Z

Dear Rich: Can I get a trademark on my own name so that I can use it exclusively for the crafts items I make and sell? Or do I automatically have a trademark on my name? I'm so glad you asked. The short answers to your questions are "maybe" and "no." Yes, it is your name, but that, by itself, does not create trademark rights. Otherwise, anyone named Gallo could sell wine (or cheese) without getting sued; anyone named Victoria (or Victor) could have a secret; and anyone named Violet Blue could offer sex advice. As with all trademarks, the rights go to the first person to use the name in connection with certain goods and services.

In fact, your name creates a bit of a disadvantage when seeking to register a trademark with the U.S. Patent and Trademark Office (USPTO). You can't register a personal name with the USPTO unless you can demonstrate that consumers associate your name with your goods or services (referred to as "secondary meaning"). In other words, you need to show that you've been using it for a while to sell goods or services, or have invested some money in advertising the name.

All of this is kind of ironic since the earliest trademarks were the names of crafts people who marked their pottery and silverware with their names.

You can get an idea of whether anyone else is using a similar personal name for crafts by checking the USPTO trademark database (click "Trademarks," then "Search TM database"). Of course, one solution is to combine the use of your name with another term -- for example, Dear Rich -- and then you can go after those competitors with identical monikers or annoyingly similar ones, as well.

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

Who has copyright in wedding photos?

2008-07-30T16:52:41Z

Dear Rich: What are the copyright and infringement implications for a website that took all the images from my daughter's wedding and claimed they "coordinated" the entire wedding when they did not? We gave the photographer permission to use photographs for marketing purposes but the site made claims that were unjustified in content. It has also appeared on several blogs. What are the limits for this? The girl who maintains the website was a bridesmaid in the wedding and is claiming she did the whole event (touchy situation because she is obviously a friend). Please advise. I'm so glad you asked. Let's start with some basics. The photographer is considered the author and original owner of copyright. Photographic images are protectible under copyright law whether in print or digital format. Most pro wedding photographers use a written agreement that spells out everybody's rights (although some agreements don't mention rights at all). In many cases, the agreement allows the photographer to retain copyright but may permit the family to duplicate and post images for personal uses, provided that credit is provided.

You say you gave the photographer permission to use photos for marketing purposes. Was that part of a formal agreement, and did that formal agreement transfer of copyright to you? If so, you can request that any website posting the photos take them down under the DMCA takedown rules.

Absent an agreement transferring rights, the photographer controls the right to make copies, post the photos, etc. Legally, the photographer can stop others from posting and reproducing the photos although practically, few photographers will do so. (Before digital photos and scanners, wedding photographers exhibited more control. Nowadays, all they can do is blackmail the family by exposing the more embarrassing pix.)

Your problem goes beyond copyright because you're concerned that someone is making false claims regarding the wedding production. Obviously, the more the material is reproduced on websites and blogs, the harder it gets to halt the annoying activity. Legally, you can stop someone from posting false comments that are defamatory (injuring your reputation), invade your privacy, or are used for commercial purposes -- for example, the photographer licensed images of the bride to be used in a magazine advertisement. Since this is a family affair, it's probably not a good idea to pull out the legal guns. The Dear Rich staff (who truly love a good wedding) hopes that this imbroglio does not mar an otherwise pleasant wedding memory.

What's wrong with invention promoters?

2008-07-19T19:37:22Z

Dear Rich: In your books, you warn about invention promoters, yet they advertise on Nolo's website. If they're so bad, why does Nolo accept advertising from them? I'm so glad you asked. An invention promotion company is a company that charges a fee to market and protect an invention. There are a few legitimate invention promoters and a lot of unscrupulous ones. The unscrupulous ones reap millions (like LOTS of millions) from duped inventors. Imagine if these companies were duping inventors when Hiram Maxim and Philo Farnsworth were inventing. We might not have the machine gun or the television. Hmm.

Nolo attempts to block Google ads from scam operators. Unfortunately, the attempt has a whack-a-mole quality because once a company is successfully filtered, the same company often surfaces under a new name. As noted above, the Federal Trade Commission has had similar problems chasing scam marketers. One invention marketing company settled with the government and reportedly used this settlement to their advantage, brazenly advertising they were the only invention promotion company "following government guidelines."

It's easy to avoid unscrupulous invention promoters. You can sort out the good from the bad at InventorEd and NIFC. Besides checking these sites, the USPTO offers ten warning signs (.pdf) of promotion scams. Also, Congress provided some legal controls over scam marketing companies when it enacted the "Invention Developers" law in 1999. Nolo now offers you a way to bypass invention promoters. Our online provisional patent application program enables you to achieve patent pending status in an online application and at a reasonable price. You can read more about provisionals here.