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

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: I am a filmmaker and am preparing to make a corporate promotional film for a well known life insurance company in which the chairman will be depicted as a fedora wearing, dusty leather jacket clad character, potentially with a whip, who will recover a stone artifact from a temple of some kind. After recovering the stone he will use its power to do little more than clear the skies and raise some smiles. He may walk over a rope-bridge or use a foxline to reach the other side of a gauge, there is also a chance he may escape in a plane ... but he will be freshly shaven, and will not chased by stone boulders. Do you think this presents a problem in terms of copyright infringement? Let's make sure we have this correct. You are using the fedora, whip, and leather jacket and you want to borrow from the plots of the movie, and you're using these elements to promote a life insurance company. 

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 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. Would it generally be considered "fair use" to make videos using short (less than 30 seconds) clips of different movies along with original audio to talk about historical times, places or themes? These videos would be put online for people to watch (not download). Also, I read somewhere that educational "fair use" of multimedia projects only allows them a life of two years. Does that mean if I create an educational video  --  say, about WWII history) using my own historical "reporting" audio over a few images and 30 second clips from different movies about WWII -- and put it online for people to watch (not download) and learn from, that after two years it has to be retired? According to the Dear Rich staff, the rule to which you refer is part of the Conference on Fair Use (CONFU) Guidelines (Sec. 4.1, Time Limitations). These guidelines for multimedia use -- and we emphasize they are only guidelines, not law -- apply if you are an "educator" and your multimedia use is "for curriculum-based multimedia projects and used as a teaching tool in support of curriculum-based instructional activities." In other words, your use should be part of a course that is taught -- usually in a series of episodes or classes. It is not enough to claim your work is "educational" to seek protection under the guidelines. 

Dear Rich: I am producing a documentary and I videotaped a couple of 30-second commercials off the TV -- it is evident from the way I framed the image that the ads are showing on a TV -- in order to make a point about the ad's message. I realize that, as you say, fair use is a defense, not a right, but am wondering if this qualifies as fair use. I'm so glad you asked. Fair use is an affirmative defense. Fair use is not always fair. Stop, you're both right. The problem in answering fair use questions is that there are no bright lines... you can only look at how past cases have been decided, review the four fair use factors and make a guess. The Dear Rich staff believes that adding one or two 30-second commercials to a one-hour documentary has a good chance of qualifying as a fair use and if you want to lower the odds of getting hassled (1) use only a portion of the commercial, (2) make it clear that your use of the ad is conveying a message (not selling the product), (3) avoid commercials that feature celebrities, and (4) avoid commercials that feature pop tunes. Even then, if the other side is well-heeled and driving a steamroller, you'll have a problem -- for example, if the corporate sponsor of the commercial finds out about your use and believes it will harm the business, you can expect a C&D letter in your inbox.

Dear Rich: I have a friend who's working on a documentary and he will be interviewing a lot of people. He wants a form (assuming one is necessary) that basically gives him the proper rights to use the footage from the interviews. Can you help? Absolutely. Releases and consents are not always required -- particularly if the interview is for informational purposes such as a documentary film or news article. Sorting out the difference between a commercial or informational use can be confusing and you're usually best off getting releases whenever possible. According to the Dear Rich staff, if you want to keep things very simple, you can start the interview by filming a video consent -- for example, stating, "As you know we're making a documentary film and by participating, you consent to our use of your image and words in that documentary, no matter what form it is in or how it is distributed. Is that okay with you?" If you want a more formal full-blown universal release -- for example, to show an insurer or a company that acquires distribution -- use the form (and explanation) shown below (it's also posted here).  All-Purpose Interview Release

Dear Rich: I have a question. I would like to produce a television series that has a host of puppet characters. If I copyright the show, does that protect my characters? Or since they have a distinct identity and expressive features should I go ahead and trademark each of them? I'm so glad you asked. Provided you have created distintive puppet characters, the copyright on your television show should protect the puppet characters (just as the copyright on Sesame Street protects the famous Muppets). The great Judge Learned Hand established the standard for character protection in Nichols v. Universal Pictures Corp., when he stated that, "...the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly." 

Dear Rich: My friends and I have some old video footage we took from punk and new wave bands from the early 1990s. Some of these are local Bay Area artists and some are national artists. We never got release forms from the artists, but they knew they were being filmed and didn't demand anything. Could we release these videos for profit? What about releasing them on YouTube? What about making a documentary? I'm so glad you asked. We assume that you have videotaped musical performances, in which case you could have problems with all of the uses you propose. It's true that you (or whoever took the videos) owns the copyright to the video. But the artists (or the artists' publishers) control the rights to reproduce the music. You need what's referred to as a sync right -- which is the right to match visuals to a musical performance. (Sample sync rights forms are included in the book Getting Permission). As for the non-musical footage that you shot, you probably are free to use that for documentary and YouTube purposes. The fact that the artists knew they were being filmed does not provide you with any rights, although a lawyer might try to argue that the failure to object implied consent. Based on the Dear Rich staff's personal observations, individual posting of unauthorized music videos at YouTube doesn't have dire consequences other than disabling of your YouTube account. However, you should assume -- as with all infringing uses -- that the more you profit, the more likely you will get hassled.