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

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 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?

[Note to our readers: This is day three in our anti-celebrity week and the effects are beginning to be felt by the Dear Rich staff: one staffer has departed for a research job at TMZ, another was found watching DWTS, and a third was caught reading about Lindsay Lohan's possible restraining order on her iPhone. For those of you who've taken up our challenge, remember: one day at a time.]  

Dear Rich: A competitive website stole my website design and code. Their site looks nearly exactly like mine except that they changed the colors. They even have my programmer's comments in their HTML. It took me weeks to come up with a unique and professional-looking design that I was happy with, and I coded my site entirely by hand. I'm so angry about this. They're basically using my hard work to attract customers... and even taking some business that I could be getting as we offer the same service! I wrote to them, but they're ignoring my emails. Would this constitute an infringement? Is there anything, short of a lawsuit, that I could do to make them change their website design? I'm so glad you asked. The short answers are: (1) it is probably an infringement; and (2) if they are blowing off your letters, they will most likely not stop unless you hire an attorney (and even then, there are no guarantees).

To our readers: This is the first day of our celebrity-free week, during which we will not be answering any questions about whether you can copy celebrity pictures, names, life stories, odors, hairstyles, or DNA. (And in our daily life, we will attempt to think celebrity-free thoughts.) We are not anti-celebrity, but in our continuing quest for personal authenticity, we urge you (and our fellow bloggers) to achieve some perspective on the issue by taking the one-week celebrity-celibacy vow. Okay, back to our regularly scheduled programming...

Dear Rich: I offer software development services through my website. I applied  for a federal trademark registration for my service mark and I uploaded a specimen which was an image of the trademark taken from my homepage that included the words "custom software design and support services." The trademark examiner said it wasn't acceptable because it "does not show the applied-for mark in actual use in commerce in the sale or advertising of the services." What did I do wrong and how can I fix this? I'm so glad you asked. A specimen for a service mark must identify the applicant's services -- which you did -- and it must indicate their source -- which you apparently failed to do. The Dear Rich staff reviewed your specimen (a screen capture) and noted that it lacked evidence that it was from your website.You should submit a substitute specimen showing the mark in the context of the webpage, preferably with the URL and a displayed method of contacting you -- for example, a "contact us" button.  In addition, you must file a declaration that states: "The substitute specimen was in use in commerce at least as early as the filing date of the application." By the way, as a service mark owner, you can submit a non-website specimen instead -- for example, you can submit letterhead, an invoice, or a business card -- provided it displays the mark, describes the services, and demonstrates a method of contacting you. The USPTO offers more information about service mark specimens. And speaking of services, Nolo now offers online assistance for those who wish to apply for federal trademark registration. 

Dear Rich: I set up a blog aggregator. I don't have ads or anything, it's just for me and a few friends to use. I include excerpts of articles, links to the original articles, and some of the full posts of the original articles. Somebody claimed that I violated their copyright, sent a DMCA complaint to my webhost, who then took my site down without any notification or chance for me to make a correction. My host is now claiming that they have to immediately take the entire website down, without notice, because of the 1998 DMCA. I read about the DMCA at the Copyright Office website.  It doesn't say that a website has to come down immediately (or even seem to be very clear on how much written material constitutes 'infringement'). I'm a little confused, as most of this is new to me. Could you offer some insight? I'm so glad you asked. As for the content at your site: According to the Dear Rich staff, there is no problem with the links in hypertext form. Reproducing full articles is probably an infringement; providing excerpts is disputable. We presume a copyright owner sent a take-down notice to your online service provider (OSP), who acted "expeditiously" and removed the infringing content. By removing the material, the OSP qualifies for a "safe harbor" from any liability. If you dispute the notice -- many are abusive -- and you're willing to risk a court battle, consider a counter notice. (Here are samples and more information.) If the complaining copyright owner fails to respond to your counter notice by filing a lawsuit (uh-oh!), the OSP may re-post your content. These rules and procedures are part of the news-friendly Digital Millennium Copyright Act.

Dear Rich: My company has developed a database tool that allows people to review different rules in all 50 U.S. states. We're about to show it to some outsiders who might want to license it. Should we patent it? What should we do to protect it? I'm so glad you asked. The short answers to your questions are "Maybe" and "a few things." 

It seems like there are two things you'd like to protect: a database of information; and a tool that organizes and/or searches that information. As for the tool, if it is novel software code, that code may be protected under copyright law (PDF). The code and software process may also be protected under patent law. You say you're going to show this tool to outsiders soon. You don't need to be concerned about copyright protection, since you have a copyright on the software regardless of whether you register it. As for patent protection, you can preserve your rights by filing a provisional patent application before you show it to outsiders. A patent attorney can advise you, or your can use Nolo's online provisional patent application filing system. In reality, the filing is unlikely to do that much good because your right to go after those who infringe the patent won't kick in until you get the patent (which is years away). But don't give up! There is a way to protect your database tool (and we'll talk about it in a moment). 

As for your database of information, the various rules in the 50 states are likely to be public domain. But what may be proprietary (and protected under copyright law) are: (a) any explanatory or additional language you add; and (b) your selection and organization of the 50-state rules. According to the experts, there are really only six ways to organize data: alphabet, time, number, catergory, location, or hierarchy. According to public domain expert Stephen Fishman, the first three methods are unlikely to be protected; the other three may be protected if you can demonstrate a degree of creativity in the selection. If you're getting the feeling that protecting your database under copyright law will be difficult, you're on the right track. About ten years ago there was a rallying cry for legislation to protect databases -- but nothing ever came of it. (You'd have a better chance of protecting your database in Europe.)

So what's a database owner to do? According to the Dear Rich staff, your best approach is to use contract and trade secrecy law. End users who access your database should agree to an End User Agreement (EULA) that prohibits pilfering the tools or proprietary information. For example, that's the approach that eBay successfully used against Reverseauction.com to protect its customer database. Contractors who work on your database should sign nondisclosure agreements. When showing your database and tools to outsiders, use a typical nondisclosure agreement (here's an example). Some outsiders may balk at signing NDAs, particularly if they're already working on something similar, but a laywer can tweak the agreement to satisfy everyone. And of course, if you do license it, your license should require EULAs for end users and an assurance that the licensee won't challenge your proprietary claims to the database and tool.

Dear Rich: I have a question. Would I be allowed to have an image of a licenced character -- let's say Homer Simpson -- as an example on my website? The site will have Google's Adsense on it, so technically I will be commercially exploiting a licensed character even if the revenue will be quite small. What sort of copyright info would I need to display on my website as not to be in breach of any copyright rules and regs? I'm so glad you asked. Regardless of how little money you make at your site, using a character like Homer Simpson without permission will violate copyright laws and most likely violate trademark laws. That said, 20th Century Fox (Homer's "owner") appears to be somewhat tolerant of website reproductions of "stationary-frame" images -- at least they were ten years ago, based on this letter from Fox's lawyers). That letter also provides proprietary and disclaimer language that you can add at your site. Fox obviously polices unauthorized Simpsons uses (including infringements by the U.S.  government). But Fox's hesitancy to go after single-image reproductions of Simpsons characters may have something to do with angering fans, as well as the huge task of going after the large volume of unauthorized images of Homer on the web. (Our last Google image search showed 586,000 results. D'oh!). Nevertheless, the Dear Rich staff believes that if you wish to stay below Fox's radar, one way would be to avoid providing audio or video clips, or any other downloadable Simpsons materials.

Dear Rich: I have a question. I am helping to create a website and one of the components is to provide some advice about songs and music that might be appropriate for funerals. I'd really love to include the lyrics so that folks could peruse them, along with a link to a spot where the piece is being performed. But I am a wee bit worried about spending sleepless nights in jail for including the lyrics -- even though they're all widely available on many sites. We did not intend to offer any commentary, just the bald lyrics. Will I run into a legal problem? I'm so glad you asked. The short answer to your question is that you will be violating the law, but that you probably won't run into problems. Publishing lyrics without authorization is a violation of U.S. Copyright law. Back in the old days (before the year 2000), music publishers went after lyrics websites with a vengeance. Now, unauthorized lyric reproduction is rampant. That doesn't mean that music publishers are tacitly permitting it; they're still sending out DMCA takedown notices and they're even considering going after Google, whose search engine is part of the profit-making machine in which lyrics are used to sell ringtones, affiliate products, and Google Ads. They've also set up a legit alternative -- in April 2007, Yahoo and Gracenote created an online lyrics license service that includes rights to lyrics from some (but not all) of the major music publishers. But that service has yet to click for legitimate lyric licensing the way iTunes has clicked for legitimate downloads. In summary, the Dear Rich staff does not want you to get nasty letters from lawyers but the staff believes that the odds of getting such a letter are slim.

Dear Rich: I have a question. Can you explain how a common sense thing like "selling pictures online" can be patented? I read recently about a settlement by Pictage against a company that had patented a method for selling pictures online. Where's the sense in this? Why isn't just the code for the method protected and not the idea? I'm so glad you asked. As to your first question -- where's the sense in this? -- the Dear Rich staff is unable to provide an answer except to say that "common sense" and the law are, at best, distant cousins.

As to your second question, our staff believes you may be mixing copyright and patent law. Under copyright law, the code, and not the method of business would be protected. Under patent law, the business method is protected, which is why so many companies sought and obtained iffy patent protection for their online commerce systems during the dot-com boom (one-click shopping anyone?). Many of these patents -- such as the patent at issue ("method and apparatus for storing and printing digital images") -- were filed during the period preceding the bursting Internet bubble and recently, a dispute about one such patent (filed in 1997), has stirred up issues regarding the legitimacy of all so-called Internet or business-method patents. As pointed out elsewhere, the company that owns the patent at issue doesn't operate a digital photo website; it appears to exist as a patent-holding company that pursues infringers, an entity sometimes derogatorily referred to  as a patent troll. Although this blog prides itself on providing practical information (and we don't want you to shy away from doing the right thing), we do suggest staying out of the way of  patent trolls since they are expert at steam rolling those who cannot afford to take them on in court.

Dear Rich: I have a question. My business partner and I have acquired trademark registration for the name of our business. We bought the domain name (.com), as well as about nine different extensions (.net, .org, etc.), and plural versions in nine extensions as well. We also have registered copyright protection on the name. I was going to use the name for a blog at the Blogspot domain -- but it is already taken. (The person who had it is no longer using it and has started a different blog.) Do we have any legal rights to the name when it is used as part of the domain name at Blogspot. If so, can we ask a confusingly similar website/blog to cease and desist? I'm so glad you asked. The short answer to your questions is, "Probably."

In your case, you registered in two classes and one of them included "On-line journals, namely, blogs featuring self-help, personal growth, and gratitude." So, you'll have a good basis to stop a blog that offers information or commentary under a confusingly similar name. That is, if you went to court, you would have a good chance of prevailing.

However, you will have difficulty asserting your rights against the blogger under international cybersquatting rules, even if the blogger acted in bad faith, since all Blogspot.com blogs are subdomains. In other words, bloggers at Blogspot.com don't "own" domains; they've acquired limited rights to post under Blogger's (that's the company that runs the service) terms of service. However, if the blog's name is misleading or confusing people as to its source, you may be able to appeal to Blogger (owned by Google, Inc., btw) based on a violation of its blog content rules. Write to them and explain the situation; they may be able to help you out.

The Dear Rich staff admires your diligence in acquiring all these forms of protection, but the staff is confused about your statement that you have acquired copyright protection in the name, since copyright does not extend to names