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

We've been here before. We explored a similar issue last August regarding the Nuremberg Trials transcripts and we start with the same principles -- copyright does not protect spoken testimony, only fixed versions of that testimony. The 'author,' for copyright purposes is typically 'the fixer,' -- in this case the court reporter. And as we also noted, at least one case has held that court reporters are not authors of courtroom testimony because the mechanical process of transcribing does not demonstrate sufficient originality. We're unable to find any caselaw that grants Copyright in trial transcripts. Although laws currently exist providing common law rights to spoken statements, it's not clear whether they could be successfully asserted against you. If we were a betting blog, we'd bet that you would be okay -- under copyright law -- to use the transcripts. 

Proving access. Even if you can prove that you wrote the words -- for example, you kept a notebook for 39 years documenting your poetry -- you still must prove that the musician received your words (in copyright parlance, that's referred to as "access") and copied them. That seems like an awfully difficult thing to prove. The affidavit from your friend is good but unless she can verify that the pop musician actually received your letter, it won't help your case very much. In summary, it's not out of the question, but proving infringement will require hiring a lawyer and taking a financial risk.

Indemnity. The Dear Rich Staff  believes that the clause you're referring to is either a warranty - in which the artist promises the film does not infringe -- or an indemnity clause - in which the artist agrees to pay for any damages resulting from any claim of infringement. Either way the distributor can likely go after the artist for reimbursement if someone sues. Some distributors don't just rely on these contractual promises; they ask to see the documentation verifying the licenses and permissions. 

Fair Use and Other Defenses. The concept of "fair use" is primarily for copyrighted works - the Hannah Montana song -- and not for trademarks (the golden arches). Trademark fair use applies to a different type of defense. As noted above, even if the distributor prevailed, the distributor would most likely have to pay its own attorney fees. So being right doesn't mean that the artist and distributor are free of financial liabilities. Also, you didn't mention if the anti-establishment film is a documentary or feature film. A documentary is likely to provide stronger defenses. (BTW, in today's completely co-opted world does the term "anti-establishment" have any meaning anymore?) 

Insurance and Other Odds and Ends. Does the distributor have insurance? If so, you can be sure that the insurer will proceed after the artist and obtain a judgment (and the distributor may do the same on its own). The artist may not have anything of value right now but a judgment will last for many years should the artist earn or inherit anything in the future.

Struggling Artist? We're not sure why the term "struggling artist" bugs us. But really, everyone's struggling to some extent -- even Lindsay Lohan -- and the artist in your question just got a distribution deal which means he or she is way ahead of the game, at least in the struggle-reduction department. Ennyway, just a thought ... and we'll try and get over ourselves.

For more information about copyright and trademark infringement, see my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.

Forest or the Trees Dept. Hmm ... We could go into discussions about substantial similarity, the abstractions test, and trademark infringement (and we could review a previous post on this subject). But it really comes down to whether the folks that own the Indiana Jones trademarks and copyrights feel that your insurance company is channeling its brand. 

Facts. Facts. It's true that copyright doesn't protect facts but dictionary publishers would argue that writing dictionary definitions requires skill and unique phrasing. Even in those cases, when a definition is too short, or doesn't involve sufficient creativity, or is in the public domain, such definitions can still be protected as a group under the compilation copyright (and we assume that "compiling" a dictionary is different than having it "complied" -- see our cover above). As for linking to the online dictionary, that's a tough call. Like inlining or framing, it may be considered a copyright infringement. The university may also have a claim against you for unfair competition or similar statutes which make it illegal to pass off your work as that of someone else's. The real problem is more of a practical one -- whether you want a self contained app (that can also run on an iPod Touch without wifi) or one that is link-dependent.  As for international copyright rules, if the copyright is valid in a country that is a party to an international treaty, it can be enforced against you in the U.S. 

The Dear Rich Staff refers to your situation as the Kinko's Konondrum -- so named because we once faced this exact situation at a Kinko's (before they were FedExKinko's ... er, FedExOffice) and we tried to explain to the clerk behind the counter that we were the author of a book on copyright and that yes, our use was permissible even though we did not have permission. The clerk wasn't interested in our claims and we couldn't blame him.  (This was a few years after Kinko's had lost a fair use case over coursepack copying). In the end, we lied to get the job done. We do not advise you to lie and wish you the best in dealing with your moral dilemma. BTW, we hope you like our artistic take on Mary's hat throw --  we call it 'Love is All Around.'

Learn about licensing with my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off.

The AP's claim is based on: (1) copyright law -- you cannot rewrite the article in a manner that creates an infringing derivative work, (2) state misappropriation law -- there's 90-year old case involving the AP that says you can't compete unfairly by stealing "hot news," and (3) wishful thinking -- copyright permits free use of facts. 

By the way, the Dear Rich Staff reports that there are many superheros in the public domain (as this website demonstrates) and there are even whole comics devoted to them; but you probably won't want to use any of these unknowns for your movie. In any case, our legal explanation is unnecessary because it's unlikely anyone will finance your script unless you can get clearance from the licensed character owners. (If you're looking for legal counsel to sort it out, why not ring up Matt Murdock?) (Speaking of subliminal messages, the photo above shows the Dear Rich staff with an unnamed licensed character whose head appears to be upside down.)

Okay, so let's assume that the author files a lawsuit. Your publisher -- assuming you were lucky enough to find one in these troublesome days of publishing -- (or your publisher's insurer) would likely ask you to pay the costs of the lawsuit based on the indemnity provision in your contract. So even if you win the lawsuit -- or you settle as they did in this case -- you probably will have given up most of your royalties to pay the attorneys. And if you lose the lawsuit, -- as in this case -- then you pay the attorneys, and your book goes unpublished. 

Okay, now for the fine print. Is it legally permissible to borrow? Maybe. Some plots -- boy meets girl, boy loses girl, boy gets girl -- and some characters -- good cop, bad cop -- are so stock, that they are considered merely "ideas," not original expressions -- a theory best expressed in this case. In other cases, the author may create something transformative that qualifies as a fair use. (Keep in mind these are issues raised at trial, so the attorney is billing as you prove your point.) There are many cases on the subject of borrowing plot and characters and you may want to peruse a copyright treatise before penning your opus. And of course, as always, disregard all of the legal blather, above, if the book or character you are copying -- for example, Sherlock Holmes --  is in the public domain.

Dear Rich: I have to file a pro se case against an author using my mark in the title of her new book (yet to be published, but much publicized). Can I file for injunctive relief against her publisher, agent, publicist and her all at the same time or would I just file against the publisher? The short answer is that you should only seek an injunction against somebody who is about to cause you immediate harm that cannot be repaired and for which money won't compensate you. So, you'll have to figure out who, amongst your candidates, fits that bill. (We assume you're referring to a preliminary injunction -- an order granted before the trial occurs.) Even if you can prove under trademark law that the use of the mark in the book title is likely to confuse consumers -- and that could be a tough claim to prove -- it doesn't mean that anyone caused you harm that is "irreparable." You're going to have to show up in court and make a strong showing that you're likely to prevail at trial and that if the book is published you're going to really take a serious financial hit. That's a tough argument to win if you haven't made much money with the mark in the past, for example. Since you're already headed uphill as a pro se litigant, the Dear Rich Staff thinks you might want to simplify your litigation by striking the request for a preliminary injunction. Keep in mind that if you lose the battle over the injunction, you're in a very poor strategic place heading for trial. And if you win the battle, the court may require you to post a bond to compensate the publisher for any harm caused by the injunction (in the event that you later lose the case). Ouch!  

Okay, the short answer to your question is that the only way you're likely to stop the other company's use is to file a lawsuit and win. Since we're not sure about the outcome of that suit and since a lawsuit could cost more than buying a house, the smart thing to do would be to wait to see what happens with your trademark application. If your registration is granted, you'll have a better foundation for your lawsuit. The big question you will need to ask yourself before walking into any court is whether the competitor is hurting your business. Are your fans really likely to be confused?