March 5, 2010
Dear Rich: I want to use the melody (we will do the lyrics) of the 1977 Elvis Costello song Watching the Detectives in a promotional video. It is for a medical device company. Term is 9 months (this year). Do I need a sync license? Who is this sent to? (Costello is within the Universal Music Publishing Group). Wow, the Dear Rich Staff loves that song. Using it to promote medical devices is really thinking outside the box -- like way outside.
Right, you had a question ... Yes, you need a sync license and you would need permission to modify the lyrics. You should speak with the publisher -- yes, it's Universal Music Publishing. Contact them at 2440 Sepulveda Blvd., Suite 100, Los Angeles, CA 90064 (310) 235-4700. If you run into a problem -- the typical one being that nobody takes your calls -- you may need to hire a clearance expert. You can read more about that stuff in our book.
If you create your own version of the song and don't imitate the singing style of Elvis Costello -- imitating artists in ads leads to problems -- you will only need the permission of the publisher (or administrator).
March 1, 2010
Good title; bad title. How do you verify that someone owns copyright? You can start by searching Copyright Office records, or you can hire a search company to research the copyright history. Search results, alas, are not always conclusive. The heirs may not yet have registered ownership in their name, may not have filed documentation evidencing the transfer, or they may have filed documents that have not yet been recorded. There is also the possibility that the records reflect that the heirs own copyright ... but don't reflect the fact that they have since transferred rights. Finally, the heirs may have provided incorrect information to the Copyright Office. A registration doesn't verify that the person owns the copyright; it creates a presumption that the person owns it.
Assurances. So, a wise approach may be to research on your own and to also seek assurances in your option agreement. You can include warranties -- guarantees as to representations of fact -- and indemnities -- promises to pay for all damages and costs if a third-party sues over the ownership issue. At the absolute minimum your option agreement must include a warranty from the heirs that they have the power and authority to enter into the option agreement. You can also ask that the heirs provide you with documentation from the Copyright Office evidencing ownership (that may require them to file documents) and you may also seek other proof of the transfer -- a copy of the will, an opinion letter from the attorney, or documentation from the probate court.
Wild card department. Though it's probably not an issue, it may matter whether the work falls under the 1909 Act or the 1976 Act (effective January 1, 1978). This could affect the rights of the heirs to terminate previously existing transfers of ownership. It's confusing stuff and a lawyer's assistance may be required.
February 26, 2010
Our own sad story. A few months ago, the Dear Rich Staff modified (perhaps 'transformed' would be a better verb) a clip art image and used it at our blog. A few weeks later, we got a letter from a lawyer representing the clip art owner demanding a bunch of money (at least enough to buy a couple of kayaks) or face a lawsuit. Fortunately, we made enough noise about fair use to keep the lawyers away (although of course, the statute of limitations hasn't run on that one). But the message is clear -- don't assume that clip art is free to use or modify.
Understanding the Terminology. The terms clip art, public domain art, royalty-free art, and copyright-free art are often used interchangeably (and confusingly). So here's a primer:
Clip art is a general term used to refer to any artwork that is available in a collection, either in a book or on a computer disk. Clip art may be in the public domain or royalty-free.
Public domain art is not protected by copyright. Many publishers, such as Dover Books, specialize in offering collections of public domain art. You are free to copy and use the individual artwork in a public domain collection without permission. However, you are not free to copy and sell the collection.
Royalty-free art is protected under copyright law and cannot be used for free. However, once you buy the CD-ROM or pay for access to a website that contains royalty-free artwork, your license to use the images is largely unlimited, so you can usually use the works numerous times for a broad range of uses. Use for merchandising -- putting the image on a t-shirt -- or some commercial endorsements -- using the image in a magazine ad -- may not be allowed -- a major exception to the rule that you can use royalty-free images any way you like.
Copyright-free art is the most confusing terminology. Some people use it to refer to public domain artwork; others use it to refer to royalty-free artwork. Often, it's used to describe artwork that websites offer for free to the public -- whether the works are public domain works or royalty-free works. We think it's a meaningless term.
Creative Commons artwork.To be on the safe side, clip art users might want to consider filtering their image search by using the Creative Commons image search filter (that's how we found "Sad Cat" by Peter M., above). And check the license to see if it fits your purposes.
Long story short. The other day we were at Cafe Trieste on their very long line and the guy in front of us was telling an acquaintance a very long story and at least three times, he said, 'Long story short,' and had we had less frontal lobe control, we might have said, "Dude, how can it be 'long story short,' you've already gone on for, like, ten minutes?" Ennyway, if an advertiser is providing you with artwork, you might want to get a warranty or indemnity in your agreement and if necessary, have them furnish you with evidence (terms of use, license, etc.) that they have permission to use the art.
February 25, 2010
Don't confuse agents with invention marketing scams. Invention marketing scams can be distinguished
from legitimate agents because generally agents: are hard to find because they rarely
advertise; do not give a sales pitch to inventors; will tell an inventor if the invention
has flaws or risk factors; and provide a list of satisfied clients.
In other words, a real agent is realistic
about your invention and is usually willing
to take a risk for a percentage of the
profits. Some qualified agents may offer
to evaluate your product. The evaluations
performed by legitimate reps usually cost
several hundred dollars and result in a
critique that is particular to your invention
and the appropriate industry.
Although scam marketers may seek a
percentage of profits, they actually make
their money by exorbitant
up-front fees
that are unrelated to any service
that they
perform. As a general rule, a person
or
company that demands more than $1,000
in up-front fees and will not furnish you
with a list of clients is probably a scam
marketing venture. If in doubt about the legitimacy of a company, check Invent.net or the National
inventor Fraud Center which includes a
list of suspected companies, as well
as helpful links--for example, to the
Federal Trade Commission.
February 24, 2010
Anyway, aside from our problems with over-sized four-legged animals, you had a question (or questions). Okay, here goes: (1) Generally, if you own the copyright (or trademark) on the merchandise, you control who can reproduce it. So, the woman who works for you wouldn't have any rights to reproduce the horse art. If you're still concerned, you can prevent the worker from competing against you by having her sign a written agreement that states she can't sell your designs. If your designs are not protectable under either copyright or trademark law (see below), that agreement may be hard to enforce. (2) We're not sure that #2, above, is a question so we can't help you with the company or explain how they do business. You should ask them about their terms and then compare them with competitors. We assume you're aware of online merchandising sources like Zazzle and Cafe Press. (3) A license is a form of permission -- in which you allow somebody to exploit property you own in return for a payment, usually in the form of a royalty. It can be a great way to do business because the company doing the licensing (the "licensee") will often police and protect your work as well. You can read more about it in this handy Nolo form kit on the subject.
Short phrase thing. You will have a hard time stopping others from using your short phrases (by themselves) since they're not protected under copyright law. We've talked about this a few times in the past and we're paranoid about boring our readers with more on the subject. You can always protect those phrases when used in association with a graphic -- that is you can stop others from copying the combination. You may be able to register each phrase as a trademark for use with T-shirts and similar merchandise. However, that's a little bit of a financial investment as each phrase will require a separate registration for each class of goods. Tally ho!
February 23, 2010
Assuming you do have copyright ... You should obtain consents from the subjects of your video. Unless you're dealing with producers, investors or distributors, you can probably get by with a videotaped consent. Tell your subject that you need their consent for the following uses (list all your anticipated uses such as distributing DVDs, posting on the web), and explain that you may not use the interview in its entirety-- that is, you may use edited segments. Make sure that there is a real consent -- even something as simple as "Yes, that's okay with me," will work. Then save that video. As we mentioned, if you're dealing with money people or distributors, a written consent -- with its additional provisions and releases, for example, permission to use the priest's name and image in advertising -- may be preferred.
Books that can help. You can find the forms you need in Getting Permission: How to License & Clear Copyrighted Materials Online & Off
(insert FTC disclaimer) and in Clearance and Copyright: Everything You Need to Know for Film and Television (a great primer on permissions for film makers).
Can't afford a lawyer? You may not need much money to get legal advice. Chicago is one of several cities with "lawyers for the arts" services. This may include pro bono advice or other low cost services. The Dear Rich Staff used to provide free legal advice at the CLA office in San Francisco but then we created this blog, instead! (Speaking of religion, the staff is currently digging this book)
February 11, 2010
Disclosing in Confidence. To prevent triggering the one-year bar (and to preserve foreign rights), the company must agree your disclosure was made in confidence (and treat it accordingly). It's true that many companies will not sign NDAs, particularly with individuals that they do not know. However, that's usually not the case when the company knows the other party, or has solicited the idea. So, we recommend starting with an NDA (samples are provided here).
Signing your book. Signing an entry in your invention notebook may preserve confidentiality provided it includes a statement to the effect that the disclosure is being made in confidence and the company will take necessary steps to preserve the confidentiality of the disclosure. Still, it's not as ideal as an NDA which may contain provisions for dispute resolution, attorney fees, jurisdiction, or injunctive relief.
Authority to bind. Finally, make sure the person signing the NDA or book has the authority to bind the company (include their title; be wary of "agents") and if in doubt, verify the authority.
If they won't sign anything. Be wary of companies that won't sign anything. Sometimes they have a legitimate reason -- they don't want to be limited in case they're developing something similar independently -- and sometimes they're just using their bargaining power to see what you have without any restrictions. Keep in mind that any "publication" that shows how to make and use the invention, or any offer for sale -- licenses are not typically considered an offer for sale -- will trigger the one-year bar. Disclose sparingly in the absence of a confidentiality agreement.
The young man in this photo -- my cousin Andrew -- went on to run a design company that licensed toys to all of the major toy companies. He always used an NDA!
Find out more about protecting your invention with my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.
Want to file for a patent now? Use Nolo's Online Provisional Patent Application.
December 30, 2009
Dear Rich: We would like to spoof the Pittsburgh Steelers 'Terrible Towel' with a "We ARE Terrible Towel" for the Detroit Lions. It would be white with no logos. Satires can't infringe copyrights can they? Thoughts? If you're making one towel to hold up for the TV cameras, you're probably okay. But if you're thinking of making more than one, the Dear Rich Staff would advise against it. First of all -- it's not a copyright issue as copyright doesn't protect short phrases or individual words.
It's a trademark issue. The term "Terrible Towel" was created by Pittsburgh sportscaster Myron Cope who acquired trademark rights and then assigned the registered trademark to a charity, the Allegheny Valley School, an institution for the disabled. Considering that licensing revenues from the towel have earned the school over $3 million, the school and the Steelers (who acknowledge that the towel is one of the most popular merchandise concepts in football history) both have a vested interest in preventing others from making and selling Terrible Towels. It could infringe and dilute a world-famous mark (and one that is carried to the far corners of the earth.)
Does satire matter? We must clarify one thing: you stated that satires can't infringe copyrights. That's not correct. A parody may be excused as a fair use under some circumstances. The same is not always true for satires. Here's a lawyerly explanation of the distinction. In any case, your use does not seem to qualify as either a satire or a parody, does it? Bottom line: sales and distribution of your towel will likely trigger a cease and desist letter.
To learn more about licensing, check out my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off.
December 29, 2009
Rights Organizations. In the U.S., the band would have a fairly easy time sorting this out. They could either pay the compulsory license fees and follow the instructions issued by the Copyright Office. Or they could take the easier route of charging the fees to their credit card at the HFA site -- you just set up an account and tell them how many copies. HFA instructions note, however, that the license is only for recordings distributed in the U.S. In Norway, rights are commonly sorted by Kopinor, and your friends might want to check their website for assistance. Other European rights organizations are shown here.
Small Correction Dept. You spelled Mr. B's name as Lindsay; the hypervigilant Dear Rich Staff reports that it's actually the more common male variant, Lindsey (placing #834 among male names -- compared to #1211 for Lindsay).
To find out more about music copyright law, see my book Music Law: How to Run Your Band's Business.
November 9, 2009
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.
October 26, 2009
Looking for Merchandise Agreements. Without reflecting on the pros and cons of these pre-landfill toy products -- the agreements that facilitate such deals are merchandising agreements built around a license to use the movie's copyrights and trademarks. You can see examples of a trademark license and a merchandise license (with explanations) in our book,
Getting Permission.
The Real Deal. If you'd like to see more detailed toy merchandise licenses, you might want to consider springing for License Agreements: Forms and Checklists, by Battersby & Grimes, the acknowledged leaders in toy licensing law. If that's too pricey, consider Contracts for the Film & Television Industry by Mark Litwak which provides sample agreements (and we'd also like to plug Clearance & Copyright by Michael C. Donaldson because it provides a good overview on the use of copyrights and trademarks in film). Check the TOCs for all these books online to make sure they include the right stuff. Also both of these books discuss product placements - sometimes part of the arrangement - in which the toy appears in the film.
[FTC Disclosure: We make money from the sale of our Getting Permission book (Duh!) but not from the sale of any other books mentioned.]
September 16, 2009
Yes, you could be sued if the copyright owners of the two pre-capture photos find out about your use and challenge you in court (probably an unlikely scenario). You're free to do what you want with the Taliban-created image (since for obvious reasons, nobody will claim copyright to that imagery). The fact that you're donating some of the money to the American Red Cross doesn't affect the legal claims (only the amount of damages). And if you are sued, we think you would have a hard time arguing fair use since you are not using the photos in a transformative manner -- you're simply reproducing them in order to sell t-shirts.
Learn more about licensing with my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off.
September 15, 2009
Liability Shifting. The Dear Rich Staff -- which has seen its share of rock club interiors -- is always in favor of liability shifting devices and it would be great if you can include a provision that the record label or publisher bears the burden for defending any lawsuits that arise from your photo. The trouble is that a savvy buyer will quickly strike such a provision (wouldn't you?) and insist that the photographer guarantee the rights to use the image.
To learn more about licensing, check out my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.
July 17, 2009
Dear Rich: I am an artist and was recently approached by a woman who wants to use one of my images on t-shirts. She has proposed a simple arrangement doing 24 shirts at a time. As she sells out of one batch, she will make another 24. This is not a million dollar transaction but I have no idea how to respond to it. How do I know what the going rate is? The short answer is that artists get anywhere between 5 to 20% (or more) of the revenue generated by the shirt. It depends on the demand, the size of the print run and your bargaining power. Sometimes the royalty is paid only after costs are deducted; sometimes it is straight off the top. Some online T-shirt merchants even let the artist set the royalty.
Beyond the Royalty
You should also ask yourself a few questions. Is the amount of money coming in worth your time and energy? What if you're not satisfied with the quality of the reproduction? Will the arrangement preclude you from other more lucrative deals? Do you have any reason to believe the t-shirt maker is not a trustworthy business person? If you have any doubts, it's probably a good idea to make the initial term of the agreement short, perhaps six months to a year (you can always renew). And it's best to keep it nonexclusive as well (you can always amend it later). And as they say in the music business, don't do a handshake deal, get some paper. Below is a sample short form t-shirt license taken from Getting Permission (written by the Dear Rich staff). Explanations for the agreement and a much more detailed long- form merchandise agreement can be found in the book, as well. And of course, make sure your artwork doesn't cross over into personality rights,trademarks, or otherwise illegal content. (click to download: T-Shirt License Agreement (Short Form))
June 23, 2009
Our three favorite movies featuring patent attorneys
The Last Wave (1977)
The Man Who Fell to Earth (1976)
The Water Engine (1992)
