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

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.

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. 

Dear Rich: My wife sells hand-made jewelry and recently started putting it up for sale in a local shop and asked me to help her get an e-mail address. Knowing a bit or two about the Internet I decided the best way to do this was to register a domain name and then setup a Google Apps account to host the mail. Everything was set up and fine and then last week I received an  e-mail from a law firm saying that the domain I had registered was an "infringing domain" and that the use of such a domain name that incorporates their trademark yadda yadda. Now they say that I have 7 days to respond and transfer the domain name to them and provide a sworn affidavit attesting that I ceased selling any goods that infringe on their trademark. If my wife's little side business is not related to anything that the other company sells, do they have any right to order me to turn over my domain name etc.? I didn't think that anyone could come after you for just requesting a domain name. I'm so glad you asked. The short answer to your question is "More information is needed." You're correct about the basic trademark principles -- if you're not likely to confuse consumers, then there's no trademark infringement. That's why, for example, different companies can use Arrow as a trademark for shirts and staplers and electronics (although only one company can have the domain name, www.arrow.com). Under another theory (dilution), a company with a  famous trademark can stop you from using a similar trademark even if the goods or services are not related -- for example, Microsoft could stop a company from selling Microsoft Vista dog food.

Dear Rich: I set up a blog aggregator. I don't have ads or anything, it's just for me and a few friends to use. I include excerpts of articles, links to the original articles, and some of the full posts of the original articles. Somebody claimed that I violated their copyright, sent a DMCA complaint to my webhost, who then took my site down without any notification or chance for me to make a correction. My host is now claiming that they have to immediately take the entire website down, without notice, because of the 1998 DMCA. I read about the DMCA at the Copyright Office website.  It doesn't say that a website has to come down immediately (or even seem to be very clear on how much written material constitutes 'infringement'). I'm a little confused, as most of this is new to me. Could you offer some insight? I'm so glad you asked. As for the content at your site: According to the Dear Rich staff, there is no problem with the links in hypertext form. Reproducing full articles is probably an infringement; providing excerpts is disputable. We presume a copyright owner sent a take-down notice to your online service provider (OSP), who acted "expeditiously" and removed the infringing content. By removing the material, the OSP qualifies for a "safe harbor" from any liability. If you dispute the notice -- many are abusive -- and you're willing to risk a court battle, consider a counter notice. (Here are samples and more information.) If the complaining copyright owner fails to respond to your counter notice by filing a lawsuit (uh-oh!), the OSP may re-post your content. These rules and procedures are part of the news-friendly Digital Millennium Copyright Act.

Dear Rich: I have a question. I am helping to create a website and one of the components is to provide some advice about songs and music that might be appropriate for funerals. I'd really love to include the lyrics so that folks could peruse them, along with a link to a spot where the piece is being performed. But I am a wee bit worried about spending sleepless nights in jail for including the lyrics -- even though they're all widely available on many sites. We did not intend to offer any commentary, just the bald lyrics. Will I run into a legal problem? I'm so glad you asked. The short answer to your question is that you will be violating the law, but that you probably won't run into problems. Publishing lyrics without authorization is a violation of U.S. Copyright law. Back in the old days (before the year 2000), music publishers went after lyrics websites with a vengeance. Now, unauthorized lyric reproduction is rampant. That doesn't mean that music publishers are tacitly permitting it; they're still sending out DMCA takedown notices and they're even considering going after Google, whose search engine is part of the profit-making machine in which lyrics are used to sell ringtones, affiliate products, and Google Ads. They've also set up a legit alternative -- in April 2007, Yahoo and Gracenote created an online lyrics license service that includes rights to lyrics from some (but not all) of the major music publishers. But that service has yet to click for legitimate lyric licensing the way iTunes has clicked for legitimate downloads. In summary, the Dear Rich staff does not want you to get nasty letters from lawyers but the staff believes that the odds of getting such a letter are slim.

Dear Rich: I have a question. Before our divorce, my ex-husband copyright registered an unpublished song he wrote naming me as the sole "copyright claimant". If he publishes or records the song for sale without my consent, can I file a copyright infringement claim against him even though he is the original author? I'm so glad you asked. The short answer to your question is, "Maybe." [BTW, the Dear Rich staff is sorry to hear about your marital woes (even though the subject of divorce has made for some lucrative hit songs and parodies).]

Our first question is whether there is a written document that evidences the transfer between you and your ex-hubby -- any document, note or memorandum establishing  the arrangement and signed by your ex. That's required under Section 204 of the Copyright Act. One case (involving vampire-novel author Anne Rice) indicates that the document needs to express the terms of the transfer -- that is, how much each party gets for the transfer -- so it can serve as a guidepost for resolving disputes. 

If you don't have this written document, you may have a hard time asserting your rights. Assuming you can satisfy this requirement and you are the sole copyright claimant, then you  would control all rights under copyright law. You could prevent your ex from recording and releasing the song. But if you're just doing it to be spiteful -- that is, without a good business reason -- your ex may have an argument that you're acting in bad faith under the terms of the written agreement and that could cause problems in a court battle.  

Another issue to consider is how the copyright was treated in the divorce proceedings. Your husband may have a claim to some portion of it under the ultimate property division. (This Nolopedia article may help). Since all of this may seem much more complicated than you originally expected, and since the Dear Rich staff prefers that everybody gets along (and that you avoid legal fees), you may want to draft a written statement with your ex -- assuming you're still on speaking terms --  that addresses these issues, provides for a financial payment in the event the song is a hit, and allows you to retain copyright ownership.

Dear Rich: I have a question. I live in France and I have toy patterns from 35-year-old South African magazines. Am I allowed to now use these patterns to make my own version of these toys? Also, I have tracings taken from 35-year-old coloring books that I would like to make in felt, then mount into picture frames. Am I allowed to do this? I'm so glad you asked. The short answers to both of your questions are, "Maybe." In either case, the risk of getting hassled seems slim.

Although this blog only provides answers regarding U.S. law, the Dear Rich staff can tell you that South Africa and France are both members of an international copyright treaty that provides reciprocality between member countries (meaning that the works of a foreign national in one nation will be protected in another) and that works are protected for a minimum copyright term of the life of the author, plus fifty years. So the content of the magazines is likely still protected and the South African owner could sue you in France.

However, some issues are not absolutely clear, such as: (1) Are the toy patterns protectible under copyright or are they considered unprotectable "useful articles"? (2) Do three-dimensional toys based on those patterns infringe the patterns? (3) Does the magazine's copyright necessarily protect the pattern or resulting toy? The more useful question for you is whether the owner of the pattern will ever learn of your use or care enough to investigate rights. Usually, it's not worth suing over such things unless the alleged infringer has made enough money to make a lawsuit worthwhile.

The framed felt coloring book montages create more complex copryight issues. The drawings in the coloring books are protectible and your resulting creation is probably a derivative work in which you each claim rights -- that is, both parties own rights to their separate contributions. Again, this is an academic analysis and the bigger question is really whether the owner of a 35-year-old South African copyright will learn about and pursue someone in France over allegedly copied toys and coloring books. Although we can't be sure, the Dear Rich staff is betting that's not likely to happen.

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

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

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

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

Dear Rich: I have a question. 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 purchased a web hosting package a few years back that included free website templates. When I created a different website, I used one of the templates, including the top photo. I just got a letter from a major stock photo company asking for $1,300 and to pay for a license or remove the image. I immediately removed the image, but I can't afford to pay $1,300. I have all the documentation about the free templates. Do I have to pay $1,300 for something I thought was free? I'm so glad you asked. $1,300 for a website image? Wow! Here at Dear Rich headquarters we pay istockphoto.com about $1 for low res images (like the one on the left). In any case, you did the correct thing by immediately removing the image (and keeping the documentation). Hopefully, that demonstrates your good will.

There are a few things that may be going on here. Your original web hosting package may have included a permission to use the photo but that permission did not extend to other web hosting services. Or, perhaps the first web hosting arrangement never really got the proper permission, so wherever you use it, you'll have a problem. The photo may have some digital watermarking embedded so that the stock photo company can trace all such uses and catch those who use it without permission. If you're using it under the terms of the original webhosting agreement, you need to look to your agreement and your webhosts for resolution. If not, the stock photo company likely has a legitimate claim for infringement.

How far will they pursue it? It's possible they could file a lawsuit, but that doesn't seem practical or likely -- they wouldn't recover the costs of the litigation. Odds are good that if you write and explain your mistake -- you mistakenly thought you had a license to use it -- the whole thing will go away. They may send some more threatening emails, but the chances of anything going beyond that are unlikely. If I'm wrong (hard to believe, but it happens), let me know and maybe we can trigger a Streisand effect.

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. I read recently that Victoria's Secret stole somebody's design for a bra. I have a design for something similar -- I don't want to say exactly what it is, because it kind of gives away the idea. How can I stop someone from stealing it? I'm so glad you asked. I'm familiar with the alleged bra theft, though I don't think it's fair to say -- at least not yet -- that Victoria's Secret violated the law. The woman claiming theft has a patent, but there are many ways to design around patents, and it's always possible to argue that the woman's patent is invalid. Alas, patent law is rife with misinformation regarding bra inventions, including the claim that Mary Phelps Jacobs invented the first bra in 1914 or that Herminie Cadolle of France invented it in 1889. (For those interested in the true story, I recommend Hoag Levins' wonderful explanation of brassiere inventions in his book American Sex Machines: The Hidden History of Sex at the U.S. Patent Office.)

Can you stop someone from stealing your idea? You can take preemptive steps -- one approach is to get a signed evaluation agreement (a modified nondisclosure agreement) before presenting your idea. The problem with that is that many big companies don't want to sign them because they're afraid it will prohibit them from developing similar ideas. Another approach is to seek patent protection. A patent -- as in this situation with Victoria's Secret-- gives the owner a hunting license to pursue infringers. If you're not sure about investing time and money in the full patent application, you can reserve your place in line at the Patent Office by filing a provisional patent application for $105. Nolo offers books and software to prepare a provisional application. And remember, whatever you've invented, please consider the safety issues.

Dear Rich: I have a question. I'll be using a lot of screenshots from different websites in my book. Do I need to get permission for that or is it a fair use? I'm so glad you asked. Conventional wisdom (and the Electronic Frontier Foundation) says that an unauthorized screenshot is an infringement. That said, the use of screenshots rarely triggers a complaint because either: (1) the copyright owners don't want to complain about something that promotes their company -- for example, an online tutorial about using Microsoft Word, or a book about starting an eBay business, or (2) the copyright owners believe the use is likely to be excused as a fair use. Although issues don't often arise, occasionally copyright owners do complain -- for example, Apple complained about pre-release screenshots of the iPhone. Some sites place limits on your use of screenshots in their user agreements.

Keep in mind that if the copyright owners do complain, the results can be unfortunate--it may disrupt publication of a book or other product. Perhaps a more important issue to consider is whether what you are doing is likely to anger or annoy the copyright owner. If it is, proceed with caution and review your use of the company's trademarks so that your use doesn't imply an association or endorsement.

P.S. In the future, sites will be able to block screenshots.