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

Dear Rich: I'm thinking of developing a board game based on a friend's idea. The game title and game roles are borrowed directly from a movie. Can I use the movie title and characters' names in my game? Secondly, I want to use characters' portraits from the movie in my design. What if I just draw the portraits by myself, say, in cartoon style? Third, the game rule is based on a party game called Mafia. Is that legal? Before we begin, can we send a shout-out to anyone asking Dear Rich questions about using a movie or TV show as the basis of their book, movie, t-shirt, or coffee mug? Regardless of the legal analysis provided by the Dear Rich staff, if the owner finds out about what you're doing, you're likely to get hassled. (Yes, we're talking about "sue first, ask questions later.") We're not advising you give up your legal rights, but if you have limited resources, we do advise against investing them in a project with a built-in hassle factor.

Okay, the short (and long) answers to your questions are: (1) copyright does not protect titles, but may protect a title when used in connection with other important elements (like character names); trademark law may also protect the movie title, (2) your drawings may or may not avoid copyright problems (it depends on whether they're considered derivatives) and may or may not avoid right of publicity claims (it depends on how the game is marketed), and (3) the psychologists who invented Mafia don't appear to claim proprietary rights, so you're free to base your game on it as long as you don't copy somebody else's derivative version. Take-away points: enjoy the game; don't sell it.

Dear Rich: I have a registered trademark for my music business. The registration is in Classes 9 and 16 (for recordings and sheet music). I would like to begin a line of promotional merchandise (mugs, T-shirts, etc.). Would I need to add a new class to my trademark to do this? Congratulations on acquiring federal trademark registrations. The short answer to your question is, 'yes' (or maybe 'no'). Yes, if you wanted the benefits of federal trademark registration, you would need to apply in multiple classes -- for example Class 25 (t-shirts), Class 21 (coffee mugs), and Class 28 (teddy bears). To accomplish this online, you would begin an application using the TEAS system. When you are asked to "Add Goods/Services" enter the search terms for the various merchandise you want to register and check the appropriate boxes (see below) and when done, click "Insert Checked Entries." All of the checked classes will be entered for your goods or services. (If you are selling t-shirts now and intend to sell teddy bears in the future, then follow the online instructions to indicate the different filing basis for each class of goods.)

Dear Rich: I have a question. If I license audio or video content, can I load an iPod with that licensed content and resell it? I'm so glad you asked. The short answer is that it depends what you mean by "licensed content." When you buy the Iron Man movie from the iTunes store, you're really licensing it, and you can't resell that type of "licensed content" on your iPod. But if you enter into a license agreement with the owners of Iron Man that specifically permits reproduction and resale on the iPod, then, yes, you can resell that type of licensed content. Similarly, if your band wanted to sell iPods pre-loaded with its music and videos, that shouldn't be an issue (assuming your band owns all rights to its content). But beware starting one of the many business that engage in selling pre-loaded iPods. According to the Dear Rich staff, this is one of the cloudier issues of copyright law and there is no case law that directly answers your question. Note that companies that rip user-owned DVDs to pre-loaded iPods have faced the wrath of the MPAA. Also, as we noted in a previous post, when reselling iPods, you should avoid any implication that you are a licensed Apple reseller or in any way affiliated with Apple.

Dear Rich: If I write a movie script about a fairy tale character that Disney has made a movie about -- say, Snow White -- can Disney claim copyright or trademark infringement? The script would be about what happened after the end of the Disney movie, for example. Aren't most traditional fairy tale characters in the public domain? I'm so glad you asked. Yes, traditional folklore and fairy tales are in the public domain and free for all to use -- for example, many writers have created books and movies based on Snow White. However, the scenario that you describe -- a script about what happened after the end of the DIsney Snow White movie -- is likely going to require authorization. That's because much of what we associate with that Snow White comes from Disney, not folklore -- for example, the individual names of the Seven Dwarves. Therefore, to safely pursue this course, you would need to separate out all that Disney added to the original Brothers Grimm story (including, of course, references to the songs). As for trademark rights, the Dear Rich staff has searched USPTO records and determined that Disney has filed for the federal registration for "Snow White" for entertainment services (Ser. No. 77618057), but has not (so far) convinced an examiner that it is entitled to the registration.

Dear Rich: I have a question. I love movies but I hate all the sexy stuff -- same with my friends. We have a movie club and before I show a movie, I make a copy in which I cut out all that stuff. Is that illegal? I'm so glad you asked. You are likely violating copyright laws. Of course, whether anyone will find out -- another good reason not to ask Dear Rich questions -- is a matter of conjecture. But should the owners of the films learn of your amateur editing, they could attempt to prevent your handiwork. At least, that's our reading of a 2006 federal court decision. In that case, Marty Scorsese, Stephen Soderbergh, and Sydney Pollak (among other class-A directors) successfully sued Clean Flix, a company that edited films and then re-rented them. Even though the company purchased a separate copy so that studios didn't lose any revenue in the process, a judge ruled that this practice was illegal. Currently, some companies are performing an end-run around this precedent by having a third party edit the copies. (Keep in mind, alas, that some companies who claim to rent "clean" movies, might not be so clean.) It is not illegal, however, under a recent law, to buy and sell a DVD player that filters the movie for you. In other words, you put your movie in the player and voila! No embarrassing shots of Jessica Alba! BTW, in addition to the legal issues mentioned, the showing of films for more than a small gathering of family and friends requires a public performance license. Anyway, if you can't afford to buy a filtering DVD player, may we suggest you distribute these during those unpleasant moments?