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

Dear Rich: I want to adapt an out of print children's novel from 1971 into a screenplay. However, when I tracked down the last known rights holder, a notable book publisher, I was informed that they simply lost/misplaced the film rights. They assured me that they would let me know if they found them, and that was three years ago. I plan on restarting the process again, but what is my next logical step if I reach the same dead end? Is it game over? The publisher who "misplaced" the movie rights ...did they look behind the refrigerator? Sometimes stuff falls behind the file cabinets, too. And once the Dear Rich Staff found an unopened container of Desenex way in the back of a desk drawer.

Dear Rich: I am in need of a document but dont know exactly which agreement/form will serve my need. I have a video that needs music put to it and I have found a freelancer to do it. So I need a transfer of rights doc to get him to sign before he works on it so that we can copyright it under our name without ever running into a legal issue. Does a patent, copyright, trademark need to be registered by the original artist before an assignment can be signed? Sorry, we can't answer your question until we finish downloading this album. Amazon is/was offering it for $5.99!!! No video needed for this masterpiece.

Contractor agrees that, for consideration that is acknowledged, any works of authorship commissioned pursuant to this Agreement (the "Works") shall be considered works made for hire as that term is defined under U.S. copyright law. To the extent that any such Work created for Company by Contractor is not a work made for hire belonging to Company, Contractor hereby assigns and transfers to Company all rights Contractor has or may acquire to all such Works. Contractor agrees to sign and deliver to Company, either during or subsequent to the term of this Agreement, such other documents as Company considers desirable to evidence the assignment of copyright.

You'll also need to add some other stuff like an assurance that the material isn't taken from somewhere else, information about payment and other typical contract stuff. The agreement should be signed before the work is completed.

Dear Rich: We were told by the producers of a local television station that a now defunct television program that hasn't aired for over ten years is no longer available for licensing to filmmakers because there isn't enough money in it and they do not have the staff to locate, edit and make available the footage. We actually have the footage taken from a SVHS master and want to include the show along with their on-screen talent (host and interviewer). We have permission from the host to use his likeness but have been unable to secure a license from the producers. What can we do? That depends. If someone refuses to give you permission to use copyrighted material, you can't -- with a few exceptions -- compel them to license the material. You can of course run the risk of using the material without permission under the theory that copying and performing a short snippet is a fair use because you are using the footage for purposes of commentary or criticism. The Dear Rich Staff found one example where the makers of a movie biography of Muhammad Ali used 41 seconds from a boxing match film in their biography. A court considered it a fair use. This site talks about the case and other video cases, as well.

We are wanting to name our band Denton Baxter. He was a character in the movie Open Range (photo, left). Would this be infringement? The short and long answer is that no, it's not an infringement and yes, you will be okay using Denton's name.

Dear Rich: Struggling Artist makes an anti-establishment film, which is mostly original material. In one segment, with a satirical intent, he deliberately shows McDonalds' "golden arches" and uses a Hannah Montana song on the soundtrack. Struggling Artist knows the material is copyrighted and trademarked, but he believes that he has a fair use defense and that it's OK to use it. Distributor picks up Struggling Artist's film for DVD distribution. In the contract he signs with Distributor, Struggling Artist guarantees that he owns all the copyrights to the material he supplies. Distributor takes the masters Struggling Artist gives him and sends them to a third party to be duplicated onto DVD. A month later, McDonalds and Hannah Montana file lawsuits against Distributor for trademark and copyright infringement (as Struggling Artist has no money). Is Distributor liable for any judgment in favor of the plaintiffs? Does the contract clause where Struggling Artist assures Distributor he owned the rights to the material help him? The short answer is that the distributor will be liable for infringement and the contract clause will only help if the distributor can obtain some payment from the artist. By the way, we're not sure where you fit in - as distributor or artist - so as Joni Mitchell says, we'll look at this from both sides now. 

Dear Rich: I have a film production company, the name of which I have been using for nearly 10 years, and for which I purchased a website for in 2005. I have also registered it as a business within my state. However, my goal, of course is to one day be internationally recognized. Someone from another country has begun using the same name for their own film projects. Is there something I should be doing now to gain international proprietary rights to the name? Or is that even possible? The short answer is that you should federally register the name of your film company. Registering your name as a business in your state -- for example, as a dba or as a corporate name does not give you any trademark rights. Even registering your name with your state's trademark office will not provide the protection you seek (and is usually not worth the effort). A U.S. registration will preserve your U.S. rights and enable you to stop others from using a similar name for film production services in the U.S. (Read more about enforcing TM rights, here.)  As for pursuing international rights, that may be premature since you haven't indicated that you are currently engaged in international commerce. In any case, securing rights in other nations -- there is no such thing as an "international trademark" -- has become easier in recent years with the adoption of the Madrid System. Nolo -- my employer -- can assist with federal registration, and the Dear Rich Staff prepared a helpful guide to the process.

Dear Rich: I am searching for samples of licensing agreements between a movie producer and toy manufacturer governing copyrights and trademarks used in movie "tie-in" products. Do you have any leads? The Dear Rich Staff assumes you're talking about a traditional movie tie-in toy product. For example, Mattel wants to sell more Barbie dolls so it creates a tie-in with a certain vampire movie, ("Mommy, why is Barbie wearing a garlic?"). 

Dear Rich: I purchased a number of edited DVD movies a year or so ago, when several professional editing companies went out of business. Can I make copies of these DVDs and sell them on eBay? Does someone still own the copyright to the edited versions? The short answer is yes, someone owns the copyright (unless it's one of those movies that fell in the public domain) and your duplication and sale infringes that copyright. 

Dear Rich: I was asked to use the "terminator arm" in a trade magazine advertisement. I said no due to copyright issues. Afterwards I did a search and found a number of for-sale stock images of it or very close and listing it as "terminator arm" in web search. What's up? How come nobody is suing over these uses? Ah yes, Terminator 2: Judgement Day! -- the 'Hasta Lavista, Baby' sequel! Wow, was it really 18 years ago that the T-man, with his arm stuck in some gears, bravely severed it at the elbow in order to keep battling the formidable T-1000? (Yes, and we're tired of all the references to time passing!) 

Dear Rich: I am a graduate student working in computer vision research. As part of my thesis I would like to explain certain points by making reference to a few movies including: Deja Vu, Batman, Wall-E, and The Italian Job. I'd like to use one or two stills from each movie. My thesis will be published and stored only at the university graduate students library and only one copy will be produced. Do I need permission to publish these movie stills? It sounds like a classic example of fair use -- you're making limited use for purposes of academic commentary. Nobody can guarantee you will win on a fair use defense, but if you look at the four factors, you'll see that they weigh heavily in your favor, especially since there's only one copy of your work. (If you seek to republish on a bigger scale, your publisher will likely require  permission.) PS. The Dear Rich staff supports your work on computer vision research.

Dear Rich, I am writing a movie and wanted to use short bits of super heroes like Spiderman, Superman, Batman and Wonder Woman. Have these super heroes been around long enough for the public domain? If not, could I get away with having them in my scenes in plain clothes, without calling them by their superhero names but having their costumes sort of hanging there as 'subliminal persuasion'? We're not sure about your concept of 'subliminal persuasion.' Our definition of subliminal is something that is below the threshold of conscious perception. (And no, we have not heard of any cases of subliminal infringement.) We believe you're actually referring to a subtle form of objectively conscious perception. As for your questions ... the short answers are (1) most licensed characters are protected by trademark law (as well as copyright law) and the trademark rights can last forever, provided the owner continues to exploit the uses (more on the public domain, below). (2) If you're using the superhero persona or costume, then you're trading off the popularity of the character, and in the process confusing consumers as to the source. In other words, you're ringing the infringement bell. 

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.)