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

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."

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.

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."

  

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."

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.  

Dear Rich: I attended a fireworks show and the people running it said the show was copyrighted. Is that possible?  I'm so glad you asked. It's unlikely that a fireworks display will be protected by copyright. The big issue is fixation. Copyrighted works must be fixed in some medium -- that is, they must be "sufficiently permanent" so that they can be perceived for a period "of more than transitory duration." (Ice sculptures have a better shot at protection.)

In Australia, a fireworks company claimed that its choreographed display constituted a dramatic work. Nice try. The Australian court  (.pdf) acknowledged that some events within the show might constitute a visual arts work ... but the issue was moot since anyone could film or broadcast the public event under Australian fair use rules. In 2004, two Kentucky TV stations resolved their dispute over a fireworks broadcast (without a court battle), although one station manager was convinced that copyright did not protect scripted fireworks displays. 

Photos, drawings, and films of fireworks are protected by copyright, as are the computer programs that run the pyrotechnics. And of course, the label artwork can be protected under copyright and trademark law. In any case, we're more concerned with the environmental impact of fireworks than the intellectual property rights and to that end, I guess this is one of the few times that the Dear Rich staff (... wait, this is the real staff) is rooting for Disney to lead the way.  

Dear Rich: I have a question. I read about an artist who is trying to get paid by the State of California. They're using his painting of a whale on license plates. I thought all images of animals were in the public domain. I'm interested because I'm a crafts artist and I'd like to replicate certain animal images on jewelry. I'm so glad you asked. I've written about one aspect of your question -- the copyrightability of art that borrows from nature -- in a Nolo article, so check that out. If you're too busy to get through the whole thing, I can summarize it by saying that the natural appearance of birds, bees, flowers, and the like are in the public domain. So if you're making wax candles that look exactly like a corn cob, or animal heads that look exactly like a leopard, you'll have a hard time claiming copyright.

But if you're going beyond an exact replication of an animal -- for example, painting an inspiring shot of a whale's tail as the animal dives into the water, or creating a whimsical bespectacled penguin that also understands IP law, your original expression is protectable and you can stop others from copying.

In regard to the whale license plate, the bigger issue seems to be that the artist made a handshake deal with the State of California. (Who knew states had hands?) As readers of the Dear Rich blog know, all arrangements transferring intellectual property should be in writing. Lacking any paperwork, the state's got a weak defense.

BTW, we almost quoted directly from the Associated Press story on the subject. As you're probably aware, there's no way the The Dear Rich blog is going to move beyond its current obscurity without being publicly chased by a big-time plaintiff (and the AP is a tempting, though unglamorous target). Alas, we decided to hold out for Mr. Right.

Dear Rich: I have a question. Can a copyrighted or trademarked item be reused or "repurposed," as they like to say in the recycling circles, into a new product for sale without permission? For example, can someone take a cereal box, cut it up, use the front of the box as a notebook cover and legally sell that notebook? Can someone tear a page from a magazine or calendar, fold that page into an envelope and legally sell that envelope? How about a bottle cap? Can someone fashion a piece of jewelry from a bottle cap that is identifiable in the finished piece? I'm so glad you asked. The short answer: Making jewelry from a bottle cap is probably okay, ripping pages from a magazine and selling envelopes could be fine (but ripping pages from a book or calendar may not), and making notebook covers from cereal boxes may lead to trademark problems.

The long answer (zzzzzz) is a bit more nuanced. Here goes: 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.)

Naturally, things aren't always so simple. For example, two cases involving the resale of artwork seem to have arrived at different results. 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, but a person can mount individual note cards and resell those. Another case added further confusion when a federal court ruled that the purchaser of a bundle of software programs could resell the individual components (separate programs on CDs). (Softman Products Co. LLC v. Adobe Systems Inc., 171 F.Supp. 2d 1075 (C.D. Cal. 2001).)

You definitely want to take some care selling repurposed items that contain trademarks. Although you're free to sell empty cereal boxes, you want to avoid implying that the cereal company is endorsing or is associated with your notebook products. That's going to be tough to do if the cover of your notebook is identical to the cover of the cereal. Consumers will necessarily confuse the two and likely think the cereal company is selling notebooks (not a major leap, considering they sell to kids). A prominent disclaimer may help -- for example, a statement that your business is not affiliated with or endorsed by the trademarked company. But who's going to want to look at a big disclaimer on the cover? Whatever you do, don't play up the trademarks you use in your company's marketing or business name. For example, it's not a good idea to name your website "Cheerios Notebooks." Finally, as with all issues like this, the lower you are on a company's radar -- that is, the less you sell -- the more likely you are to avoid any hassles.

Dear Rich: I have a question. I am a science journalist and I've recorded interviews with many famous scientists. I've used this material in books and articles and would now like to use these on a website for free, open-access listening. Someone has suggested that I obtain permissions from all my subjects or their estates. I believe that no permissions are required because the subjects implicitly granted me permission to use the interview material as I saw fit when they sat down with me and my tape recorder and pad. I'm so glad you asked. You are navigating through one of the grayer areas of copyright law so in answering, I'll have to use a lot of equivocating language, such as 'likely,' 'may,' and 'probably.' If you don't have time to read all of that stuff, the bottom line is that you are probably okay to do what you plan to do. The courts and legal scholars are not a beacon of clarity when it comes to divvying up the rights for interviews.

From the limited case law available, it's likely that a court will consider an interview to consist of two separate works: one work created by the interviewer's questions, and the other created by the subject's responses. These works may be protected under traditional copyright principles (or they may be protected under what's referred to as common law copyright). Under that 'two-separate works' approach, you'd need permission to reproduce the subject's answers. That permission may be implied by the subject's consent to the interview. In fact, one court -- dealing with an interview with Ernest Hemingway -- hinted that Hemingway's failure to limit usage at the time of the interview implied unlimited use.

Some legal scholars argue that a better approach is that the interviewer and subject jointly create one work. Under that analysis, the interviewer and the subject are joint authors. In that case, either author can use the interview for any purpose provided that the party using the interview accounts to the other for any profits. If this approach were applied to your case, your use should be fine since you are distributing the interviews for free and (assuming you are not making money off the website) no accounting would be necessary. You can read more on these two approaches at the Publaw.com site. Also, as you are probably aware, if you proceed without permission, you would have a strong fair use argument for distributing these interviews based on their historic and scientific value.

The whole thing becomes more complicated if you are making money from the sale or licensing of the recordings -- a situation that may trigger a right of publicity claim or (if you and the subject are considered joint authors) an accounting of moneys earned to the interview subject. Finally, there is some question as to whether federal copyright protection extends to a recorded interview, since simultaneous recording of the performance of a work of authorship (that is, not being broadcast) is not considered to be fixed. That means that the interview is not protectable under copyright law (hence the need to use common law copyright, as described above). There's no guarantee that this will all play out as described. A lawyer would advise you that the only 100% safe course is to obtain permissions. But I think your chances of avoiding hassles are good and I personally look forward to listening to the interviews. There is always so much to learn about our scientific heroes.

Dear Rich: I have a question. I am an illustrator. Is it true that the government is setting up a database of visual arts works? And is it true that any works that you don't place on this register will become "orphan works" that anybody can use without your permission? I'm so glad you asked. The answers to your questions are "maybe," and "not exactly." An orphan work is one that is owned by a hard-to-find copyright owner. For example, in 1975, a child sends a drawing to Elvis Presley. In 2008, a biographer wants to include the drawing in a Presley biography. The problem is that the artist can't be found and the publisher doesn't want to reproduce the image without permission. Two bills have been proposed in Congress that address this issue. The proposed bills would allow the publisher -- after performing a diligent search -- to reproduce the image. If the artist later appears, the publisher would have to pay a reasonable fee for the use. An unlikely crew of special interests favor the House version of the bill, including librarians, free-speech types, copylefties, academics, writers, photographers, and big industry groups like the RIAA (and, of course, Google). Under the House bill, anyone who wants to use a work must (1) document their "good faith" search for the owner, (2) file a "Notice of Use" with the Copyright Office before using the work, (3) provide attribution if they know the name of the creator, and (4) include a special "orphan works" symbol when the work is published.

Illustrators and artists are concerned about the bill because it would establish a registry of visual arts works. They're worried that if a piece of artwork doesn't show up on a registry search, all rights to that artwork may be lost. First, keep in mind that orphan or not, copyright is always preserved in the work. Second, there's nothing in the law that says that a failure to appear in the registry automatically creates an orphan. For example, even if the drawing of Suda (above) did not appear in a registry, I would still have a hard time claiming it was an orphan ... since the artist and his work are easy to locate on the web (Steve, please don't sue).

Dear Rich: I have a question. Why should I care about the Harry Potter case? Isn't it just another example of a huge megacorp using copyright law to crush the little guy? I'm so glad you asked. I don't know why you should care about the Harry Potter case. And I don't know why you should care enough to ask me why you should care about it. I don't even know why you should care about reading the answer to your question. What people care about and why they care about it is a mystery to me.

The Harry Potter lawsuit -- in which a publisher and author are attempting to stop publication of a Harry Potter lexicon -- is not an unusual copyright dispute. Maybe you're too young to remember when J.D. Salinger successfully stopped a biographer from using his unpublished letters, or when ex-president Ford stopped The Nation from printing excerpts from his unpublished memoir. But you must be old enough to remember when the producers of the television show Twin Peaks stopped publication of a Twin Peaks guide, or when the producers of Seinfeld stopped a company from publishing a book of trivia questions about the Seinfeld television series. (Talk about being re-gifted!) In these situations, the courts have done a pretty decent job of separating those cases in which the author is being exploited (not a fair use) from those cases in which the author is being explained (fair use).

As for using copyright law to crush the little guy, that knee-jerk characterization may apply in cases of RIAA smackdowns but misses the boat here. (If anything, the little guy, armed with high-tech copying tricks, has collectively done more to crush copyright than any megacorp -- check out the many illegal Potters and the frivolous Muggles-related lawsuit.) The lexicon's author knew what was at stake when he proceeded and even insisted on an indemnity clause -- a provision that saved him from having to pay any attorney fees, damages, or court costs. (Kudos to his attorney.) Time-Warner and Rowling have been reasonable in permitting the free web-based version of the lexicon for years. The lexicon's publisher understood the realities -- the real money is made selling copyrighted units of content.

Dear Rich: I have a question. I know that old paintings like the Mona Lisa are not protected anymore, but I've heard that museums can still prevent reproductions of these paintings somehow. Is that true? How can that be? I'm so glad you asked. Yes, as a general rule, paintings that existed before 1923 are in the public domain and can be copied freely. However, museums have argued for years that their photographs of those paintings were protected under copyright, thus enabling them to control everything from postcard sales to artbook licensing. That ended in 1999 when a court ruled that "slavish reproductions" of visual works in the public domain are not copyrightable. (The photos may have required skill; but there was no originality.) In other words, you're free to reproduce replicas of public domain artwork in the U.S. Of course, many museums still limit photographic access to paintings and on that basis, people who want high quality reproductions still have to seek permission -- one reason why few people have seen this rare painting of Mona Lisa's sister, Drea, (or so many of Mona's other relatives).