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

Dear Rich: I'm developing a health-related program that will consist of a book, audio program, user-oriented website, and possibly other materials later, including software and a second book and audio program. The first product will be released this summer or fall.  In 2009 I settled on the program's name and reserved that exact domain name. At that time a search indicated that neither this title (or anything close to it) was in use.  This past week I did another search and found that a UK publisher is set to publish a book at the end of summer 2010, using the exact name of my program, domain name, and anticipated book title. (Their book is also on the same topic and is already listed as "to be published" on Amazon US.) I'm considering politely asking the UK publisher if they would consider changing their title, since I previously owned the domain name, and I imagine they would prefer to avoid marketplace confusion as well. Would it be worthwhile to file an Intent to Use trademark application at this point, and would that further my case in asking if they would consider changing their book title?  Apologies for the long-winded question. You may notice that your question is not as long winded as when you sent it. We cut it by half so please don't sue us for creating an unauthorized derivative work. Anyway, your letter came at a good time because the Dear Rich Staff is rediscovering a lot of their old health/exercise DVDs, particularly the Anna Caban Pilates program with Anna and her pal, Tara. (Not the yoga Tara.)

Right, you had a question. We know what you mean when you say you've got the perfect title for your book. We once had the perfect title for a murder mystery we wrote but then it turned out everyone hated the title, so go figure! Anyway, one thing we know about the publishing world is that it is unlikely that the British publisher will change their title, no matter how nicely you ask. The choice of a title is made long before the book comes out and it's tied to things like catalogs, distribution data, ISBNs, CIPs, and lots of other pre-marketing details. If you're seeing it on Amazon, chances are good that the book is in production. Unless there is a showstopper of a lawsuit headed its way, the publisher will not want to change the title. 

Trademarks, book titles.  Filing for the mark for your program (you can't get it for a single book title) will not preclude the British use. If the British book is released in the U.S. before your intended use, the publisher might have a claim against you under unfair competition laws.  

Consider the possibilities. It's always possible that the British book will appear and then disappear. (At least that's what happened to a lot of our books.) And, you also have to consider the possible responses by the publisher to your contact. There's always a chance that it may trigger an angry letter. We think you need to be patient. Is there any way to modify what you have and still take advantage of your domain name?

Dear Rich On the Road. Hey we're packing the tour bus with Advils, jamming the flashdrive with some mad PowerPoint, and loading up the Kindle with Elmore Leonard as we head out on our summer speaking tour and extravaganza. First stop is the Society for Scholarly Publishing in San Francisco where we'll speak on copyright and licensing ... then off to ... off to where? Gee, is that all we've booked so far? Oh wait, August 15, we're talking somewhere about something ... Okay, we'll get back to you on that one. 

Dear Rich: I have been trying to come up with some craft ideas to make and sell. I thought about using CDs or DVDs as clocks by adding the mechanisms and putting numbers on the faces of them. Is this illegal? Can I get in trouble for copyright infringement? No, you won't get in trouble if you're using existing CDs. As we discussed in another post, lawyers may argue as to whether the first sale doctrine covers this repurposing -- is it a derivative work? -- but we feel your CD clocks will go unhassled. You might run into problems if you were to print a celebrity's image on the CD yourself and then sell the CD. (Of course, like everything else in life, there are videos and how-to websites explaining the CD-to-clock process.) 

Dear Rich: If I use someone's photographs from the Internet or magazine and combine say a bird from one and a plant from another is that copyright fraud? No, but it might be copyright infringement. 

Dear Rich: In creating a Performance Agreement, I noticed your book does not address how a cancellation of an outdoor show due to weather is handled. (1) Does the artist have the right to refuse to perform because of lightning and/or water damage issues? (2) What's the best way to cover this topic in a Performance Agreement? Some performers have suffered injuries (and deaths) due to unsafe conditions (and plenty more have suffered equipment damage), so, you're right to be concerned.

Outdoor Performance: In the event of outdoor performances (or "rain or shine" events): 

[ ] Artist's compensation shall in no way be affected by inclement weather. 

[ ] Purchaser shall provide overhead shelter for setup and performance area. 

[ ] Artist and Artist's equipment cannot be subjected to any form of precipitation and must be protected from direct sunlight when the temperature exceeds __ degrees F.). 

[ ] Artist reserves the right, in good faith, to stop or cancel the performance should the weather pose a potential danger to Artist, Artist's equipment, or audience. Every effort will be made to continue the performance. However, safety is paramount in all decisions. Artist's compensation will not be affected by such cancellation. 

[ ] In the event of circumstances that present a threat of injury or harm to Artist or Artist's equipment, Artist reserves the right to stop the performance. If the Purchaser is able to resolve the situation in a reasonable amount of time (maximum of __ minutes), Artist shall resume performance in accordance with the original terms of this agreement. Purchaser shall be responsible for payment in full, regardless of whether the situation is resolved or whether Artist resumes performance. 

Dear Rich: I'm trying to get a trademark for a nickname. The nickname has been seen in newspaper articles and media referring to different individuals who accomplished similar feats throughout the years -- imagine it is a nickname like "Home Run King" (although this is not the nickname). I have done an unprofessional trademark search and it seems that nobody has claimed it as a trademark. My friend is the original record holder of the feats referred to by the nickname. Although others have been called by this nickname over the years, and they have come close, nobody has broken the records earned by my friend to achieve the nickname. Now my friend wants to start selling pictures and memorabilia and he wants the nickname to be only related to his name. (My friend has already got the domain name. What class should my friend file in when seeking a trademark. He may be selling lots of things with his autograph: sports equipment, clothing, and my friend also wants to protect his nickname for writing books and making movies. My friend can only afford to start with one class at the moment. Which one would give the most protection? By the way, is LegalZoom a decent company to use? The short answer to your first question is that you should pick the goods or services that you believe will be most lucrative (and for which you wish to preclude competitive use). It all comes down to how you are currently making money, and the ways in which you have a bona fide intent to make it in the future. For example, if your friend is currently entertaining at sports memorabilia shows then perhaps you should seek a registration for entertainment services. If you're selling a lot of t-shirts, then that's the way to go. As for books and movies, you cannot obtain a trademark for the single title of a work, so you would not be able to obtain a registration for those goods unless your friend is writing a series of books. 

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: I have a two-part question. Part 1: I'm developing a website whose main feature is an online database that contains (in part) original material written by me. What kinds of notices, user terms and agreements should we have to protect the database and its contents? Part 2: The site publisher is a partnership, but one of the two partners retains copyright to the database and its contents. Should there be a license agreement between the database author-partner and the partnership itself?   This article is a good summary of the legal maneuvers used to protect databases. The most common strategies are to:

Dear Rich: I developed a new sporting event and would like to find out how I can go about getting it patented or copyrighted? I have read about other types of inventions but not about the development of a new sport. The short answer to your question is that you may be able to patent your new sport but you will have a hard time claiming a copyright. Patents have been issued for new games, (ping-pong poker, anyone?) for variations on existing games (arena football anyone?), and even for competitive techniques within sports (ready to improve your putting?). (You can read more about these sorts of patents in this article.) Under a recent patent ruling a process or method (such as a sport with rules), may qualify for a patent if it affects some hardware -- that is, it is tied to a particular machine, object, or apparatus, or it transforms an object into a different state or thing. In short, as long as your 'invention' includes a physical element such as a football, hockey stick or some other object or hardware, you probably satisfy this requirement. As for copyright, you cannot copyright a system or method (although you can copyright expressions of that game -- for example, a Wii version of the sport, a book about it, or demonstration videos). Of course, the Dear Rich staff notes that your biggest challenge may not be getting the patent, it could be gathering the resources to stop others from playing it without paying you. 

The short answer to your question -- to paraphrase Bob Dylan -- is that something is happening here but we don't know what it is. Your dilemma falls into a growing area of litigation known as idea-submission disputes. Whether your situation violates Canadian law (we're assuming you submitted to a Canadian company) probably depends on the following: (1) The circumstances under which you submitted your idea. (Was it clear you were making the submission for financial consideration? Probably.) (2) Whether your idea was sufficiently unique. (Have others come up with the same concept or are they likely to? That's a tough call since it's based on the Bible.) (3) Whether there is documentation indicating that the company intended to enter into an agreement or venture with you (or otherwise share revenue). (4) Whether what you provided was sufficiently copyrightable. (Did the company infringe that copyright with their game? Hard to tell without further investigation.) (5) The amount of time that has passed since the company first produced the game. (Did you wait too long to pursue this claim?) (6) Whether Canadian idea submission law differs substantially from U.S. law (according to this article, they appear to be based on similar Anglo-American legal principles). As usual, there are other factors, such as whether you can afford to hire a lawyer, whether you can afford to duke it out, and whether the game is popular enough to make the lawsuit worthwhile. (And of course, the Dear Rich staff suggest that you could always turn your experience into another board game.)

Dear Rich: I have a business that sells small collectible figurines. I am interested in finding out whether it is acceptable for me to create figurines of characters in movies which have entered the public domain, without obtaining permission. For example, a classic 1940s movie entered the public domain because of a failure to file a copyright or extension. The actors in this movie are well-known and have been in many other movies. I would like to produce and market a figurine of one of these characters, as portrayed by this well-known actor (who is now deceased). Is this acceptable? The short answer to your question is "yes, for the movie rights; maybe not for the rights connected with the actor's estate." The only way you could be hassled regarding the movie rights is (1) if the movie is based on a book which has not fallen into the public domain and (2) a court feels that the literary character is separately protectible. The Dear Rich staff thinks that's a long shot, since most books published before 1963 are probably in the PD. As for the actor's publicity rights, many states, including California, have a "descendible" right of publicity, meaning that the actor's estate inherits the right to exploit his persona. In California, that right lasts for 70 years after death. That's why Steve McQueen and John Wayne are still making endorsement deals. Since it is sometimes difficult to separate an actor from a character -- think Jimmy Stewart and George Bailey -- the right of publicity may be triggered by your figurine (provided the public can recognize it as being based on the actor). In that case, check your mailbox for a C&D letter.

Dear Rich: I registered a blog on Blogger in January, 2009, and at the bottom of the blog was a trademark notice as well as a copyright notice repeating the blog's name and stating "all rights reserved". The blog links to our website, which sells coastal- and beach-themed decor and similar items. It was our intent to make the blog a website of its own. Our first posting was on February 14, 2009. I recently learned a company registered the exact title of my blog with a dot.com extension on February 9, 2009 and it states "beach-inspired decor, lounging, and accessories" The site did not exist at the time I registered the blog or did a trademark search on TESS. Their site has no mention of a trademark or any copyrights. Since I claimed trademark for the name as well as copyright notice on my blog, I am wondering if I can send a cease and desist letter. I'm so glad you asked. The short answer is "maybe you should send a letter... or maybe not." We're sorry to hear about the misadventures of the competing website. However, the Dear Rich staff must point out that adding a trademark notice -- for example, the letters 'TM' -- doesn't mean much except that you think you have trademark rights (unlike a federally registered mark, which entitles you to use the 'R' in a circle). Starting a blog at a blogging website like Blogger also does not guarantee you rights; it merely reflects that you started a blog. (Note also that the date of the postings can be changed in blog software, so that fact by itself is not conclusive as to rights.)  

Not only that, some states, like California, have hefty annual LLC fees. Here's an excerpt from my Music Law book that goes into more detail on the subject. 

Dear Rich: My Dad is a musician who played on some records in the 1970s that  still get played on the radio. I'd like to help him investigate any money he is owed for these old recordings. How do I go about it? I'm so glad you asked. The short answer is that you may have to hire someone to help you with your investigation. According to the Dear Rich staff, determining whether your Dad is owed money depends on several factors. These include: (1) whether your Dad contributed to songwriting, in which case he may be due money from a music publisher or a performing rights society, (2) whether your Dad performed as a union musician on sessions, and (3) whether your Dad signed recording agreements with record labels as a featured artist (or member of a band).

You can review some of this information on your own. For example, societies such as HFA, BMI or ASCAP should be able to verify whether your Dad is listed as a songwriter.  If your Dad was a union musician, he may be entitled to payments from the Sound Recording Special Payments Fund. If your Dad signed recording or management agreements, you need to review them to determine how payments are to be made (and to see whether they expired). You may also need to track the change in ownership of the record labels as the business has been in turmoil during the past 15 years. (And, finally, there are Sound Exchange payments from digital broadcasting as discussed in a previous entry.) Ultimately, you may need to hire an attorney who specializes in tracking down payments or hire one of the companies that specialize in these types of investigations (although we have not tried their services and cannot vouch for them).