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

Dear Rich: A newly formed wedding gown preservation company has used one of my bridal portraits in their advertising. I did buy the rights to the picture from the photographer that took them. They have used it as the main photo on their web page, on brochures and handouts, and are wanting to make an 8 foot by 10 foot poster of it as a display at the Bridal Extravaganza. They are willing to compensate me for my picture, but I need general idea of how much to request. And do I request more each time they use the picture for something different? Wow, we had no idea that there was an entire industry devoted to preserving wedding dresses (hey, and you new brides better watch out for scams and the unromantic-sounding "anti-sugar treatment.")

Dear Rich: I have created an electronic speaking character for retail sales. I would like to use the phrase "You are so good looking" from Seinfeld. If the phrase is used in the same manner and same delivery as in Seinfeld, but in a completely different non-human voice coming from a plastic character that does not look human (character does not represent anything on Seinfeld) can I use the phrase legally? We should mention that there was a case a while ago in which two actors from Cheers sued a chain of bars that had installed audio-animatronic figures resembling their characters and that spoke their "trademark" lines. (The underlying legal principles are explained here.) And of course, let's not forget that horrific turn of events when somebody tried to cash in by turning Vanna White into a robot.

Dear Rich: I recently came up with an idea to do a portrait of a now deceased punk rock icon. The portrait is to be more a personality study/project for myself and I had contacted members of his family to find out if I could use various photos of dead person for this project. Family member of dead person to whom the photos originally belonged said she would allow me to use them but that dead man's estate would more than likely sue. Keep in mind this project is not-for-profit and the portrait would not be a realistic rip-off from an existing photo. Can I do this without obtaining permission? Can I show the work in a gallery if it is not for sale? We didn't have any painted portraits of deceased punks to illustrate your question so we used this brush-stroked non-portrait of Iggy since Iggy is eternal punk which is beyond deceased punk. The photographer is part of the Dear Rich Staff and we sure hope she doesn't sue because it would be a heartbreaking lawsuit of staggering complexity.

Dear Rich: I have a food product I am developing and I want to call it Einstein lunch drinks. I would position the copy to read the "smart way to lunch." I would talk about how if Einstein would have created the perfect lunch he would have done it this way: with a perfect balance of energy and complete nutrition etc. Is this considered public domain and can I go in this direction? The Dear Rich Staff would suggest that you "don't go there." Einstein's estate has been exploiting the great man's persona for commercial purposes for everything from children's books to a 10-foot Legoland statue and is represented by Greenlight, the agency that also reps deceased celebrities such as Steve McQueen, Bruce Lee, and Johnny Cash. (Wow, we wish there was a movie with that cast!) The ability to exploit a deceased celebrity is based on a principle known as the right of publicity. In the case of certain celebrities, and in some states, the right can extend beyond the celebrity's life.

Einstein and food. We used to eat at place on 9th Avenue in San Francisco called Einstein's Cafe based on the "smart food" principle but we assume that was unlicensed and anyway, it's closed. (BTW, we can't say we were wild about their sandwiches.) And there is an east coast chain of bagel spots called Einstein Bros. Bagels which appears not to step on anybody's rights since it's distinguishable. Although we wish you the best in your endeavors, we're not sure about the Einstein-food connection. We recently finished a 21-hour audiobook on Einstein (check out the sample to get an idea of what it takes to be the world's greatest audio narrator) and we don't recall one mention of Einstein's dietary habits although there are reports he promoted vegetarianism.

My nephew has come up with a new nickname for the NBA player Jonas Jerebko from Sweden ("The Swedish Eagle"). He and his buddy have come to games with a self designed t-shirt that sports an eagle-like bird with a ball in the talons and the jersey number of the player, player's name on the back like a jersey and the player's country flag, as well as cardboard wings and have generated a little publicity for themselves and their concept. Pictures of them have been on a couple of websites, a newspaper, jumbotron at the arena and television coverage of the game. Jerebko also has signed the cardboard wings with his name and an "aka The Swedish Eagle." They are in the process of obtaining a trademark so they can sell t-shirts or other marketing kitsch. No one has the title yet. Can they print the shirts before getting trademark for "The Swedish Eagle" concept? Do they need Jerebko's permission? NBA permission? Can they use the shirts without his name? Do my nephew and friend need a partnership or can they register under both names? The Dear Rich Staff isn't very good at forecasting the future, but one thing we can predict with some certainty is that as soon as the NBA is aware of your nephew's sale of merchandise with the player's name and number, they'll get their lawyers to fire off a letter demanding that he halt the activity. We could be wrong -- and they may prefer to wait and see if it goes away itself. But if we were in your nephew's position, we wouldn't file that trademark application. As nice as the imagery and nickname may be, people are buying the merchandise because of its association with the player -- the use of his name and number cinches the association. The NBA, along with the various teams, controls the rights to exploit the player for merchandising purposes. So, he's stepping on those rights and the NBA usually doesn't like it. 

Dear RIch: I work for a non-profit and my board members are obsessed with getting photo releases - but as they don't have a good one and they often want to photograph events with LOTS of people - they refrain from taking photos at all. I was under the impression that unless a photo was going to be sold, no release was needed. Is there a guideline that will enlighten both myself and my board about when photos and video that will be used for things like social media and newsletters require releases from their subjects?  I am afraid this question is going to lead to a "it varies from state to state" answer. Actually, the answer doesn't vary from state to state (and in any case the Dear Rich Staff would never do you like that!) By the way, you might get more out of reading this discussion or by having your nonprofit spring for this book.

Dear Rich: If you snap a photo with a celebrity in your place of business can you then use that photo in a documentary to show that the business attracts celebrity patrons? We don't have a written release from the celebrities. The short answer is, "yes," assuming you have the photographer's permission. You should not use the photos in ads for the restaurant -- that is, implying the celebrity endorses the restaurant -- and you probably shouldn't use the celeb photos in ads for the documentary, either. But if you're using them within the documentary simply to show that the celebrity ate at the restaurant--and the celebrity was aware the photo was being taken (no hidden cameras)  -- there shouldn't be a problem. 

Dear Rich: I'm a young aspiring playwright and am interested in writing a one act based on the transcript from a trial that took place earlier this year. The defendant was found guilty of misdemeanor manslaughter and I've received the transcript directly from the AG office. Can I use the transcript liberally (adding my own lines here and there but basically using what was actually said)? And then who is the play copyrighted to? Is it credited to me as the writer and "based on the transcript of..."? The Dear Rich Staff thinks you'll be able to pull it off (and hopes you give it a shot) but we can't guarantee freedom from legal liability. (We know that sounds legalese but it's the best we can do.)

Dear Rich: I would like to make and sell a calendar at the same time as the forthcoming release of Sarah Palin's memoir. I have tentatively secured permission for a Palin photograph via Getty Images. As for the phrases "Sarah Palin" and "Going Rogue", which are owned presumably by Harper Collins the publisher: 1) How much would it cost to acquire permission from the publisher? 2) According to my research the process for permission is fairly simple. Is this correct? 3) Is a request like this common for a popular book on this scale? The short answer is don't bother asking for permission for your calendar. First, it's possible -- in a major publishing agreement like this --  that the publisher didn't acquire any auxiliary merchandising rights (such as calendars, note cards, etc.) Second, even if the publisher did acquire these rights the company will either publish the calendar directly or choose a favored licensee--that is, someone with whom it has previously licensed calendar rights.Third, by asking for permission, you will put the publisher on notice as to what you're doing, which could prevent you from "going rogue" yourself. Finally, even though it's possible that the publisher will assert trademark rights to "Going Rogue," it's not likely that trademark rights can actually be acquired in a single book title such as this. Bottom line: you're running a moderate risk of being hassled for issuing your calendar (and maybe also tripping over Sarah's right of publicity). Paradoxically the Dear Rich Staff believes you'll run less risk if you don't ask for permission. In any case, you'll likely face some serious marketplace competition, which is why we suggest you abandon the idea of trading off the book title and strike out with something unique (see above).  

Dear Rich: Over 13 years ago I purchased MC Hammer's storage units which contained all his personal property such as awards, costumes, music, wedding pictures, business records, tons of mementos, etc. I want to do a blog and put pictures of the items daily on the blog so everyone can see what I have. I would like to someday sell it all to someone who will donate it back to him and they can use it somehow as a business promotional write off. In the meantime, I have about 10,000 brand new albums and tapes of his that I would like to sell on the blog site. I have a catchy name for the blog with part of it being MC Hammer. I collect memorabilia but have never hit it big like I did with this. Apparently you purchased the goods during Hammer's 1996 bankruptcy, one of several setbacks suffered by the man many once considered too legit to quit. As for your questions, the short answers are: (1) Reproducing the personal photos, business records, and perhaps some of the related mementos, at your blog would be an infringement of copyright (and may be a violation of privacy of the persons involved); (2) selling the stuff back to someone who will give it to MC Hammer sounds fine (though we're not clear on how this would qualify as a business deduction); (3) Selling the albums and tapes is fine though as far as we can tell, you might have a challenge moving the albums (and little luck with the tapes); (4) Using MC Hammer's name in your blog may be okay provided it doesn't create the impression that the performer endorses or is any way associated with what you are doing.Taking the other recommendations into consideration, the Dear Rich Staff notes that you can probably reproduce photos of items that you are selling for example, costumes and various mementos.

Dear Rich: I think my question relates to the right of publicity. I write and edit test prep materials for students studying for the SAT. These materials include sample test questions and examples that illustrate various grammar errors. Some of the sample test questions and examples include the names of celebrities, as well as the names of characters from novels and films (e.g., Harold and Kumar, Santino and Fredo). To illustrate an error in parallel structure, for example, I might include a sentence such as: "Steve Martin is both a brilliant physical comedian and has been successful at writing novels." Then I would include the corrected version: "Steve Martin is both a brilliant physical comedian and a successful novelist." Another example, used to illustrate an error in subject-verb agreement, is: "Megan Fox is one of those actresses who has international appeal." The corrected version would be "Megan Fox is one of those actresses who have international appeal." Would the publication and sale of materials that include these types of examples violate the right of publicity? The short and long answer to your question is that you can use fictional character names and celebrity names in your examples without violating the right of publicity. The Dear Rich Staff appreciates the opportunity to include a Megan Fox photo though we think a better example for your book might be: "Megan Fox is one of those 'actresses,' who have minimum screen time but maximum downloads." 

Dear Rich: I have a cartoon of a character I created -- Dr. Julia Chicken -- facing off with Sigmund Freud. I wanted to make  U.S. postage stamps using that image but my artwork was rejected by Zazzle.com on the grounds of some celebrity malarkey. I had a feeling that Freud would give me trouble, but I'm not sure why. First of all, it's a parody, but even greater reason for confusion is the fact that the Freud photo is public domain. The short answer is that Zazzle is not legally obligated to manufacture your stamp. In order to use Zazzle, you must agree to their User Agreement and as you know, that means you can't use pictures of celebrities. Strange as it seems, the man who founded the psychoanalytic school of psychology and popularized the couch ("And how do you feel about that?") is still considered a celebrity 70 years after his death. He even has Beverly Hills representation. In addition to the 'celebrity malarkey,' the Zazzle User Agreement also won't let you "create a 'new' image using elements from images other people have created." So you've got two strikes against you. (Other companies sell custom postage stamps and their policies appear similar.) As for your parody and public domain defense, they're not relevant since the User Agreement trumps copyright (and nobody is accusing you of copyright infringment, anyway.) The Dear Rich staff believes you're best off dumping Sigmund from the imagery and just proceeding with Dr. Julia on stamps, instead.

Dear Rich (and Staff): Karla is a wannabe comedienne who's developed "Karla Klown," a unique and highly recognizable costume/mime act. To try it out, she goes to Times Square where she's videotaped by both tourists and a TV reporter wandering by. People laugh hysterically when they see Karla's persona on TV and in YouTube videos but they have no idea who they're looking at. So someone decides to manufacture thousands of T-shirts bearing her likeness. What should Karla do? How long would it take to trademark the "Karla Klown" persona and would it be worth it? Once "Karla Klown" appears on stage or television, is Karla granted automatic control of the commercial use of her likeness by virtue of established public exposure?  The short answers to Karla's question are: (1) if Karla has been on television and achieved some notoriety for her appearances she may be able to prevent others from copying her claiming unfair competition and violation of her right of publicity; (2) Karla can't register her persona as a trademark but she can register her name and logo (for example, her image in makeup) for sale on goods such as t-shirts. The process costs approximately $300 per class of goods or services and takes about nine months to a year. (You can learn more about trademark registration here); and (3) the point at which Karla obtains a right of publicity for the exploitation of her persona depends on several factors, described below. 

Dear Rich: I have questions: is it legal to sell jewelry with Michael Jackson's pictures? The images are all over and I wonder if it is legal. What if the seller is just charging for the craft and not for the image? Is that OK and legal? Final question, is it OK to buy these jewelry items or is the buyer breaking the law as well?  (1) Selling MJ jewelry probably violates Jackson's trademark rights (hey, if you're in D.C., check out the USPTO tribute), his right of publicity (which passed to Jackson's estate under California law) and may also violate copyright law, unless permitted as a fair use.  (2) We don't understand your second question and we don't think a judge would either. If a crafts artist includes an infringing work on its product, it's an infringement no matter how the price is explained. Otherwise, bootleg DVD sellers could claim the buyer was only paying for the DVD not the pirated movie. (3) In some instances the buyer of an infringing work may violate copyright law depending on the intent and use of the purchase -- for example, if the buyer resells it, displays it or in any way contributes to or encourages the infringement. The pursuit and prosecution of buyers is not common. Copyright owners are more interested in sellers of infringing merchandise. So, if it's illegal, you may be wondering why the estate doesn't do something to stop the tsunami of infringements. Probably it's so overwhelming that if enforcement is taking place, it's for the most egregious and damaging offenses.