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

Dear Rich: Our company offers a website directory service for advertisers. The advertisers can supply a photo but some of them now want to supply artwork. As long as the image came from clip-art, or some other publicly "royalty-free" stock photo site, it can be used without permission, correct? We wish that were true. 

Dear Rich: I'm planning to set up a blog where I'll post multiple sketches, poems and short stories, but I don't want to go broke paying for copyright registrations. What is your view on just sending myself an email with each work in it as timestamped evidence that I created it, and then registering the works in big groups once or twice a year? The Dear Rich Staff is always curious about people who send things to themselves as a form of legal maneuvering. On the one hand, we don't think it's a worthwhile form of protection. On the other hand, we can understand the desire to get mail. In fact we can really understand the desire ever since the USPS completely screwed up our three change of address forms (and we're including the one we did online and paid a dollar for). When the USPS called us to explain the problems -- which they apparently can't fix -- they gave us such a weird explanation that we're wondering if maybe they outsourced customer service to District 9. As a result, we instituted our own mail-forwarding system in which we periodically return to our previous address and plead for our copies of Patternworks and California Prison Focus.

Dear Rich: On my not-for-profit pages and hopeful e-book, if I provide a link to another website's page and show a photo from their page, do I need also to gain permission? The Dear Rich Staff reports that (1) no, permission is not needed for the link to the page and (2) yes, permission is needed for reproducing the photo (unless perhaps you are reproducing thumbnails, in which case it may be excused). We assume you don't need the legal backstory for all this but if you do, you can read about it here.

Dear Rich: I allowed someone to publish one of my e-mails. The other person asked permission to publish it. He said he wouldn't change the words. I simply said "yes, but make it anonymous". He published the email in segments and responded to each segment. Later he stopped protecting the anonymity of it. I've asked him to remove my email but he claims that because I gave him permission, he has full right to keep it on his website. When you give permission to someone to publish your copyrighted work (your email), you're granting a license. We're assuming that the license was made by exchange of email, and these emails form the terms of your license. 

Dear Rich: Is it possible to get a trademark for one's name in order to force others to remove it from website content? I filed a lawsuit three years ago and Michigan's Court of Appeals was gracious enough to effectively "seal" the case and remove it from their online archives. However, there is ONE clown who has posted a summary of the case and is refusing to pull it offline. I have a uniquely "googleable" name and believe I have recently lost a job because someone read this summary of my case online.  Sorry, but your 'trademark' idea won't fly. When a person's name functions as a trademark, it's in relation to a product or service -- for example, Newman's Own salad dressing, Smith & Wesson firearms, or Dell computers. Putting aside the difficulties involved in acquiring trademark protection for a person's name, you can only use that name trademark to stop others from competing against you unfairly, not to prevent the listing of your name on court documents, in newspapers or in any type of editorial use.

Dear Rich: I recently found myself working on a project that involved an iPhone application that would function as a Punjabi language dictionary. I retrieved this dictionary by re-typing it into a database without the permission of the university that holds the copyright. The dictionary is also available online, however the copyright footer only mentions the software company that made the dictionary front-end, not the actual university. What is the law regarding international copyright of dictionaries? Can you really copyright a list of facts? Can I submit my iPhone Application to the App Store without any troubles? Would it make a difference if my app went out to the Dictionary's website and searched for a word rather than keeping a local database in my app? Will I have to retrieve a license from the university and pay them a certain share? Wow, that's a lot of questions. Let's just summarize by saying that if the university has a copyright in the content of the  Punjabi dictionary, your work is infringing. With the exception of GNU licensable dictionaries such as Wiktionary, dictionaries are typically protected by two types of copyright: a copyright for the original text expression in the definitions, and a compilation copyright for the collection of definitions. 

Dear Rich: I am looking for a very simple permission slip that will, when signed, allow us to publish pictures taken during church events to an events page and special pages of our website. Is there such a thing? The Dear Rich staff has dug deep into its volumes of legal blather and pulled out the following basic permission form, modified from an agreement in our helpful tome, Getting Permission. This is a very simple photo permission agreement and should be used only for republishing someone's photograph at a website. If a fee is charged, you can add a statement regarding that information and if a photo credit is to be provided, list that somewhere in the agreement -- for example, "Photographer shall be credited as follows: 'Photo Copyright 2009 Jim Smith.'" If you need more than this or are concerned about legal rights, etc. review the book.Simple Photo Permission Agreement for Use at Website . 

Dear Rich: I am 12 and I have a radio program that uses the service mark "For Kids ... By Kids." I have been using it since 2005. I have an application in process for the service mark for use in Internet radio. I am affiliated with a radio consultant who is talking to radio stations about licensing my format. In March 2009 a radio network released a new program format that uses my service mark. I sent them a C&D letter and they would not comply as I am not a station in their market. But they do stream on the Internet and use the same service mark and I am a direct competitor, I would say, as I have streamed at JENNiRADIO.com since 2005! My lawyer and their lawyers have already talked and they said no, they will continue to use my SM. What should I do now? Wow! First of all, the Dear Rich Staff is impressed. You're 12 and you have your own radio show, you've been to CES (like 4 times), you've interviewed Mitchel Musso (more than once), you can send cease and desist letters, and you know the difference between a service mark and a trademark. (BTW, we're going to refer to trademarks and service marks interchangeably).  

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: So, is an agent who is helping a buyer, who is not trespassing, who is invited into a home for sale (via a Realtor's ad), allowed to snap photos and publish them online for all to see, without specific expressed permission? Or is the permission implied with allowing 100+ buyers into the vacant home? Or is it a conditional invitation with limitations on rights to photograph? Just because you were invited on to someone's property, vacant or not, does not imply the right to take photos. The best argument you could make would be that the seller or the seller's agent was aware of you taking photos and didn't complain. (For example, the Dear Rich Staff was recently at the Google offices in San Francisco, taking a video of the free lunch -- it was pretty impressive stuff, gourmet pizza, fresh broccoli, incredible salads, and free wheat grass juice in these little shot glasses - until a Google rep explained that no photos were permitted. Okay we got the point even though we still like looking at the video when we're hungry.)  The next question is whether permission is required. After all, permission is only needed if you are violating someone else's rights. Someone may claim your posted photos violate copyright law -- a long shot -- assuming there's something copyrightable in the photos (artwork on the walls?); or someone may possibly claim invasion of privacy (although if the house is vacant and hundreds of people are walking through it, that's a tough argument to make). It may be a violation of contract if ads for the home state "No Photos." It may violate someone's right of publicity (wow, check out this cool right of publicity site) if you photo them in the house and you use that photo to sell the home, blah, blah, blah. The real issue is why are you asking this? Are you being hassled because you're an agent who showed up at a home for sale, took pictures, posted them without permission? If that's the case -- and since agents need to work together cooperatively in most communities (especially in a tough real estate market)  -- don't you want to work this out with the people you are dealing with on a day-to-day basis? It's always more satisfying to "get to yes" without bringing in the legal blowhards. (What's the movie poster got to do with your question? There are a lot of vacant homes for sale in New Granola.)

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.)  

Dear Rich: Can I use a piece of music that was downloaded from iTunes for a website I have? Is that legal? If not, how do I make it legal without costing an arm and a leg? I'm so glad you asked. The Dear Rich staff is not sure what an arm and a leg costs and the idea of valuing it and comparing it to a music license is confusing and disturbing since (1) valuation of loss of limbs is so difficult, (2) the valuation may be artificially tied to an insurance calculation, and (3) the valuation would be tripled if the loss involved substantial pain and suffering. 

Dear Rich: I am preparing to license a U.S. "patent pending" invention to a U.S.-based company. Even though the market for the product is clearly worldwide, it is sparse enough that it does not justify expensive foreign patent filing. The company's supplier and its competitors are located in China and Korea. If any of these other companies sell to U.S. customers via the internet (typical), I believe the sale legally occurs in a foreign country, therefore sidestepping my patent. If so, I question if the company I will deal with has any reason to enter a license agreement with me. Is there any way I can be protected in cost-permissible way? I'm so glad you asked. The short answer to your question is that once you acquire patent protection, you can stop Internet sales to U.S.-based customers. U.S. patent holders can stop anyone from importing infringing products or offering infringing products for sale (advertising or marketing) that product within the U.S. There are also  federal court decisions indicating a foreign supplier cannot "induce" infringement in the United States. So, whether copies of your product are sold on the Internet, or they slip out of the factory's back door, or result from competitor copying, you can stop these from coming into the U.S. The bigger concern is who will bankroll the policing and enforcement needed to stop this activity. One of the reasons inventors license (rather than manufacture themselves) is so that the licensee (the company to whom you're licensing) will watch your back. You may be able to enhance that protection by authorizing (via the licensing agreement) for the licensee to go after infringers and to split the resulting court awards after deducting legal expenses. (You can find additional information about licensing patents in this book.) Without going too far into the blah-blah-blah world of patents and lawyers, the Dear Rich staff feels you should discuss this matter with an IP attorney before agreeing on important licensing agreement terms such as territory, indemnity, and grant of rights.  (You can find qualified IP attorneys in your area in Nolo's Lawyer Directory.)

Dear Rich: Can you acquire trademark rights for a blog? If so, what category would it be in? We're doing a service mark amendment for Category 41. Originally we asked for seminars, but there was a "likelihood of confusion" there. I'm so glad you asked. You can acquire trademark rights for a blog title. In your application, you would describe your services as, "An online journal, namely a blog featuring commentary and information in the field of [state your blog's field]." Unfortunately, the class of services in which you would seek to register your blog is still most likely going to be Class 41 --  the class for which you were previously denied registration. If the examiner found a substantially similar mark in that class, you face an uphill battle even if switching from "seminars" to "blog." In order to acquire the registration you'll need to show, using several factors, that your mark is not likely to confuse consumers of the other service. If you cannot do that, you must forfeit your application fee and start over. The Dear Rich staff feels your pain... and your letter did prompt us to file an application for our moniker (see above).

P.S. Don't forget, you can find lots of other helpful free trademark application information in Nolo's Guide to Trademark Applications (download it on this page).

Dear Rich #1: I have had a business installing and maintaining equipment for a number of years. I now want to register my trademark, but I do not know if I meet the "in commerce" requirement. I am in a first state and have a number of customers located in a second state, but the work I do for them is all on customer property located in the first state. Am I "in commerce"? I also do some work on  American Indian land. Is this work in commerce?