Create, Consult, Control
News & commentary on intellectual property issues.
Feb082010 | Steve O'Donnell
Some things you can't copyright
Copyright is a strange thing, it comes into being (at least in some form) as soon as something copyrightable is created, almost like some ancient Greek god myth. Also, much like a Greek god, copyright can be capricious, nonsensical, and sometimes takes the form of a swan to seduce mortals. Ok, maybe not the swan thing, but it’s still pretty strange.
Although it is often hard to understand, there are rules covering what can, or can’t, be copyrighted. Of course the rules might not be self-evident, so here’s a selection of things that can’t be covered by copyright:
1) Short phrases: You can’t copyright your name. Sorry. You also can’t copyright something like a title to a movie or book. I still don’t suggest you name your memoirs “Harry Potter and the Chamber of Secrets,” even if your name is Harry Potter and your book largely discusses your Chamber of Secrets, but that would be because of a trademark problem, not a copyright one. Also, don’t be upset next time you hear some celebrity copyrighted some stupid slogan. The reporter got his facts wrong, what he meant to write was “trademarked [some stupid slogan].” Go ahead, say “that’s hot” all you want without Paris Hilton’s permission (just don’t put it on a product you’re selling without checking with someone first).
2) Bare ideas: You can’t copyright your idea for a reality show. I’ve gotten that question a few times. You could write it down in detail and claim copyright to that manuscript, but you can’t stop someone from using the same core idea for their own work because of your copyright.
3) Facts & non-creative works: You can’t copyright cold hard facts. There is a great case on this, Feist, that comes up in just about all conversations about copyright. In that case, a phonebook listing was not covered by copyright because it wasn’t creative. The level of creativity needed for a work to be covered is very small, but greater than zero. Often, Feist is referenced if a person tries to register something that is no more than a collection of other works or if their creation isn’t particularly creative.
4) Works of the Federal Governmental: Generally, things produced by a federal employee as part of their job is not copyrighted, at least they’re not eligible for a US copyright. Feel free to use NASA images as your wallpaper good citizen. That doesn’t necessarily mean that everything owned by the government is fair game, there may still be copyrights in things produced by contractors or transferred to the government. Further, works by some agencies like the US Postal Service aren’t considered works of the US Government. Lastly, state and local governments often copyright their own works. There, clear as mud.
5) Useful Items: This is one tricky to understand, but if something has artistic and utilitarian aspects, but the artistic aspect can’t be tweezed out of the whole to be copyrighted, then the whole thing loses copyright protection. A good discussion is in the Pivot Point case.
6) Clothing Designs: Clothing really falls under the Useful Items heading, but it usually slips out of the category because the designs at issue tend to be those that don’t seem particularly utilitarian. It is possible to have some aspects of a piece of clothing be protected by copyright, such as a particular pattern, but the actual article itself is not. That is the reason why right after the Oscars you can buy red carpet fashion-knockoffs in any dress store. There is always some discussion floating around this last category because there is a decent argument that haute couture is not utilitarian. I wouldn’t be surprised if Congress eventually got around to amending copyright law to address this.
Feb052010 | Steve O'Donnell
Infringe? It’s a business decision.
A common question all attorneys get is “am I gonna get in trouble for this?” For some things your attorney will be able to give you a decent answer. . . “yes, that’s a really dumb idea” or “no, that’s fine,” but much more common is a more stereotypical lawyer answer of “it depends.” For intellectual property questions, I usually dredge up middle school algebra.
Every decision can be made with the help of an equation. Let’s say your burning question is "should I hit this guy at the bar that keeps looking at me?" The left side of the equation might be:
“(chance of me losing the fight)*(chance of me landing in jail)”
The right side of the equation might be “(how much would I love to pop this guy?)*(chance that the girl at the end likes macho jerks)”
If the left side of the equation is greater than the right side, not hitting the other guy is favored. Now, of course, you can’t know the real values of any of the variables, but you can estimate. If there is a chance that they guy is really looking at someone else or just has a facial tick, and he’s a 300-lb monster sitting next to his buddy the cop, well, stay seated and order another drink. If he’s obviously being a jerk, you’ve got 40lbs on him, there are no cops around, and you know the girl likes macho jerks, the equation favors popping him. Unknown variables are also in play: maybe he’s a ninja, or an android, or a ninja android. You can’t know everything, but the more information you have, the better your decision making process will be.
It’s similar to questions I get all the time concerning intellectual property. Only a fool would make an uninformed decision. Even a gambler willing to risk big is only going to do so after evaluating the chance of losing with the possible payoff.
It’s part of my job to identify and flesh out what variables are in play. If the question involves using an image for a blog post from and there is a plausible fair use argument, that’s one thing; if the question involves making and selling t-shirts with Mickey Mouse on them, that’s a much different equation.
Jan192010 | Steve O'Donnell
What should your copyright notice say?
As I mentioned before, copyright has a lot of urban legends attached to it. Another one of these is the attachment most people have to the little copyright notice on the bottom of their websites.
You don’t need it.
Copyright is automatic as soon as something is “fixed in any tangible medium of expression.” Under US law, a copyright notice is not required for anything first published after March 1, 1989.
There may be reasons why you’d want to use a copyright notice. There is a chance of the notice scaring away a potential infringer that doesn’t know much about copyrights. I don’t think it’s much of a watchdog, maybe a small chihuahua--one of those shaky, teacup, apple-headed chihuahuas.
Another reason is that a notice will defeat a challenge that an infringement was not willful. If an infringement is willful, the infringer could be liable for enhanced statutory damages as high as $150,000 plus costs and legal fees. I know, sounds good doesn’t it? However statutory damages are only available to registered works and precious few people register the work on their websites with the copyright office. Notice may also have benefits under the laws of other countries.
On the other hand, having a copyright notice doesn’t hurt anything. Whether you want to use one or not is your call, but don’t feel like you’re putting your work in danger if you don’t have one.
Image published in 1906 found on cyberlawcentre.org and is from the Library of Congress' Bob Hope Vaudeville and American Variety Archive.
Jan042010 | Steve O'Donnell
How many copyrights does your blog infringe?
If you are a blogger you’re probably familiar with blog scrapers (sites that take other people’s content and republish somewhere else). Bloggers have a good reason to be upset about scrapers; after all, it is someone else taking your work. However, most bloggers don’t give a second thought about snatching a picture online and using it for a post.
If you find a picture on Flickr, another blog, or somewhere else online and upload it to your own blog (or worse yet, inline link to it from your blog) without permission, you’re committing a copyright violation.
By grabbing whatever picture you find that fits with your post you’re risking damages up to $150,000 for a registered work. Admittedly, that number is an extreme possibility, and probably one that would never be levied against a blogger, but it is technically possible. A more likely damages award would be $750 for a registered work, plus lots more in attorney fees.
Most graphic files you encounter online are not going to be registered with the copyright office, in that case damages would likely be limited to actual damages and an injunction to take down the picture, plus whatever you have to pay your attorney.
More likely than someone suing you for scraping their .jpg is them sending your ISP a takedown notice, which is probably going to result in them taking your site down until you remove the picture. It’s less onerous that taking a $150k hit, but still not good.
If you want to be a good internet citizen, and have the moral authority to complain if your blog gets scrapped, don’t take from others. There are plenty of sources for Creative Commons images, Google Image Search’s Advanced tab will pull such images, as will the Creative Commons' own home. Just make sure you comply with the license.
Image published in 1906 found on cyberlawcentre.org and is from the Library of Congress' Bob Hope Vaudeville and American Variety Archive.
Dec312009 | Steve O'Donnell
Poor Man’s Copyright
Copyright, perhaps more than other legal fields, has a lot of urban legends attached to it. The most pervasive is probably the Poor Man’s Copyright where one mails themselves a copy of their work to prove copyright. Copyright attorneys have another name for this: crap.
The setting is this: an author mails a copy of their manuscript to themselves, but doesn’t open it. The author then submits copies to publishing houses and is rejected, but later sees someone steal take their idea and make a fortune off of it. The author sues and there is a dramatic scene where the judge opens the sealed envelope, sees that the other person stole the work and decides in favor of the author. For dramatic effect, we see the defense attorney slam his briefcase shut while the author’s side erupts into a perfectly choreographed, but seemingly improvised, dance routine. Next there is a fade-in of the defendant counting out a huge stack of bills to the author before tossing the money into the air and storming out of the room.
Ahh, Hollywood.
Alas, that never happens.
A Poor Man’s Copyright is, well, crap. Consider this: I mail myself an unsealed envelope and let it sit for a few years. Eventually there a novel that gets turned into a smash movie (maybe one involving friendly vampires with comically large heads) so I quick write up a version of the book and seal it in the envelope. Ta-Da! Now I sue, settle for millions and retire to an island with my supermodel wife.
Sorry, that isn’t going to happen. The sealed envelope will have little or no evidentiary value that I wrote the happy vampire book. If anything, it will show that I have something in an envelope stamped with a certain date--not that the contents of the envelope was there by the stamped date. In other words, it’s worthless to me.
The best way to prove that you created something is to register the copyright. Registration isn’t difficult or expensive and usually doesn’t require a lawyer. I’ve set up some of my creative clients with a scheme to recognize and register copyrights as soon as they’re ready to make sure that they have the best protection available. Contact me if you’d like to learn more.
Image from cyberlawcentre.org and appears to be in the public domain.
Dec152009 | Steve O'Donnell
The Zappa Family Trust vs Assorted Zappa Tribute Bands
Frank’s widow, Gail Zappa, head of the Zappa Family Trust has taken issue with a number of Frank Zappa tribute bands and has successfully shut down shows by threatening legal action. Is this an example of abuse or does she have a viable legal theory?
First, Happy Zappadan everyone! Zappadan is, of course, the annual celebration of Frank Zappa’s work that runs from December 4 (the date of his death, a/k/a/ BummerNacht) until December 21 (his birthday, a/k/a Day Zero of Zappadan).
As I was saying, the Zappa Family Trust has targeted Zappa tribute bands and has shut down some shows by those acts that don’t have the Trust’s blessing to perform. Not so surprisingly, one act that does have the Trust’s permission, Zappa Plays Zappa, is headed by Dweezil Zappa.
To be fair, it has been at least a year since I heard rumblings about the Trust, so maybe Gail has softened a bit. Regardless, Whether these threats are primarily motivated by the desire to make sure that Frank’s music is presented only by those gifted enough to pull off his challenging pieces, or simple greed is a question I will leave to others to debate. I’m more interested in whether the Trust has legal support for their stance.
The obvious legal theory, copyright, probably won’t help the Trust. A quick search of ASCAP’s site shows that a number of Frank’s works are licensed through them. What that means, is that any venue that takes out a license from ASCAP can host bands that cover those songs. Still more works may be licensed by BMI or SESAC.
The other legal theory I can think of is a little more subtle. Trademark law allows a business to keep others from using their trademark in a way that is likely to confuse the public. A quick search turned up 34 trademarks owned by the Trust covering, among other things, the name “Frank Zappa” as used in musical performances and recordings.
Certainly, anyone that would think of going to a Zappa tribute will know that Frank is not going to be there, so can there be any real public confusion? Maybe. One might see the “Frank Zappa” mark, or a similar mark advertised and and think that the Zappa family is behind the show.
Another possibility is that these non-sanctioned shows might tend to reduce the distinctiveness of the Frank Zappa brand. If so, the tribute band could be diluting the trademark, even though there is no likelihood of confusion.
Lastly, trademarks that aren’t defended by their owners can be lost, so the Trust might just be overly cautious about preventing that from happening.
For the trademark theory to work, a tribute band has to be using a Trademark owned by the Trust. A group in KISS makeup called Love Gun that played Frank Zappa’s music probably wouldn’t run into trouble with the Trust, at least not under a Trademark theory.
Bottom line, it may seem heavy handed, but Gail Zappa has a plausible legal theory to back her up when she tries to shut down Frank Zappa tributes.
Check here, here and here for posts by others on the subject.
Image: http://www.flickr.com/photos/swanksalot/ / CC BY-SA 2.0
Dec082009 | Steve O'Donnell
Using a non-disclosure agreement to protect your ideas
Non-disclosure agreements are contracts between parties that need to share certain secret information in order to do business together. An NDA solemnizes a confidential relationship and protects the party sharing their secrets.
The content of an NDA is fairly standard; it defines what information is to be kept secret, what exclusions might exist and what the receiving party needs to do to keep the secrets. Exclusions allow the receiving party to forgo the NDA in cases when the information becomes publicly known or if it was already known. For example, if I get a company to sign an NDA and the secret I share is something they’ve already been working on, the NDA won’t prevent them from cutting me out when they take the item to market.
Obviously, if you are an inventor you will want an NDA in place before you share your invention with manufacturing partners or investors. Whether or not they will is another issue.
By asking someone to sign an NDA you are requesting them to accept a heavy obligation before finding out if your idea is any good or if it’s something they’d even be interested in. Not many investors are willing to sign your NDA without having a good idea of what you have. On the other hand, if you need to have your invention manufactured for testing, the machinist is more likely to sign an NDA to get the job.
Often, to get your foot in the door, you need to either have a track record of marketable ideas or share a trusted intermediary that can set up a meeting. More often than not, that isn’t the case. To coax investors to listen to my clients, I draft a non-confidential disclosure, discussing the invention or idea, without giving away any secrets. If there is a bite, then we know the other side is interested in the technology and likely willing to sign an NDA to learn more.
Ignoring the possibility of having your idea stolen, discussing your invention before starting the patenting process and without an NDA may likely be considered a public use by the patent office and could prevent you from ever obtaining a patent.
The safest thing that you can do to protect your idea is to talk to an intellectual property attorney before you talk to potential investors or partners.
Cartoon licensened under a Creative Commons Attribution, NoDeris 2.0 License.
Dec012009 | Steve O'Donnell
Why Archie drank generic beer
I used to be confused that some TV shows would make up their own prop brands while other shows used real-life products. I assumed it was because of trademark or copyright licensing issues. It’s actually less interesting.
First, most TV or movie uses of a real product are not going to support a claim of trademark infringement. The touchstone of trademark infringement is likelihood of confusion and that’s simply not going to happen because a character used a branded prop. If I see Frodo Baggins eat Funyuns and drink a 7up I’m not going to think that either company made the movie, although I may question the purity of the goods at the concession stand because I’d be pretty sure there was more than salt in the salt shaker.
Depending on the depiction, there might be an exception for brand tarnishment. That could occur if a brand was used in a manner that would tend to offend people, but a filmmaker would probably have to go out of their way to embarrass a brand before having to worry about a tarnishment claim.
Most routine displays of copyrighted material also won’t be actionable, more substantial displays might be actionable in certain circumstances. For example, as if the horrible abomination of a movie that was Batman Forever needed any more trouble, the studio was sued over filming an architectural work. Batman won. Batman always wins.
No, the reason that sometimes a show uses a real brand and sometimes doesn’t is ad revenue.
In a simpler time, it was thought that by keeping brands out of a show that advertising opportunities would be greater. After all, Miller Lite might not want to buy ads on “All in the Family” if Archie was drinking something better in the episode. Miller, however, probably won’t care if Archie has a couple plain-labeled “beers” during a show.
On the other hand, shows can sell product placement space during the show itself to advertisers, and for a number of years we saw both prop brands and real brands. The choice was likely dictated by whether there was a sponsor willing to pay enough for product placement to offset concerns that it would keep competitors from buying traditional commercials.
Since the debut of DVRs and other ways of avoiding commercial breaks there has been a steady shift towards using more product placement ads. Now the only time prop brands are used are probably when a sponsor couldn’t be found.
We may never again see Archie’s favorite beer outside of reruns.
Image licensed under the Creative Commons Attribution-Noncommercial 2.0 Generic license
Nov092009 | Steve O'Donnell
ReTweet for a chance to win and a chance for me to break a law
A typical Facebook or Twitter promotion is something like “become a fan (follow) and post this on your wall (ReTweet) for a chance to win something.” I get such requests almost daily and usually enter. Who doesn't like free stuff? If you're marketing your business online you've probably considered these sorts of promotions since they increase your pool of potential customers, but are they legal?
The answer to that question is far from clear. Such giveaways are dictated by state law, which means to be totally in the clear, you need to comply with the promotion laws of the whole US.
Although the language is often abused, most promotions fall into one of three categories: contests, sweepstakes and lotteries.
Contests require some skill or talent. Examples are American Idol and the bikini contest at your local bar; Sweepstakes are giveaways open to the public; lotteries require participants to provide some consideration to be entered (consideration is the lawyer term for providing some benefit to the other party, which itself, sounds like lawyer-speak, sorry). Generally, lotteries are highly regulated, while sweepstakes and contests are less regulated.
The possible problem with a “ReTweet” or “become a fan” promotion is that they require the participant to do something that benefits the promotor. Although it's not quite as obvious as requiring the purchase of a lottery ticket, it's still giving the promotor free advertising, which may make the promotion an illegal lottery.
Depending on how you look at it, the reason that lotteries are illegal are either protective of the state or protective of the people. On one hand, the state doesn't want to compete with other lotteries, on the other, the state is protecting its citizens from scam lotteries.
I know what you're thinking: “But Steve, Taco Bell and my church both run lotteries, why can't I?” In the case of a Taco Bell or similar promotion, they're really running a sweepstakes. Take a look at the official rules, there is always a way of obtaining a game piece without having to buy something. Since entry into those promotions is not based on the contestant providing consideration it's really a sweepstakes. Churches and other charitable organizations can often be cleared by the state to run a raffle.
In theory, a simple “ReTweet for a chance to win” post can subject you the the laws of all states, and possibly to the laws of all the countries of the world, which is probably a much deeper hole than you thought you were digging. Pragmatically speaking, the consideration given by becoming a fan of a Facebook page or ReTweeting a post is so small that it would take a very bored and motivated Attorney General to bring a case against you, but I know I wouldn't want to risk fighting a case in an out of state court if I could avoid it, and I imagine you don't want to either.
There are ways of lessening your possible exposure. Phrasing your promotion so it is either a sweepstakes or a contest is probably the best. Ways of doing that might include entering all fans (followers) that respond to a request for entries in a giveaway and asking them to please post on their wall (ReTweet), or choosing the winner based on the best slogan submission. You should also consider limiting the geographical reach of the promotion to lessen your exposure. These suggestions may not completely keep you in the clear, but they, or similar, should lessen your chance of getting into trouble.
Promotions of these types are very new and I'm not aware of any laws that specifically address them. In that case, being overly conservative is the best way of avoiding any problems.
This post, of course, does not address issues that exist with either the Facebook or Twitter terms of service, which may open up other cans of worms.
If you're running, or thinking of running an internet promotion, it's in your best interest to work with an attorney to make sure it's set up in a way to lessen your possible exposure.
Picture used under to the Creative Commons license.
Nov032009 | Steve O'Donnell
What exactly does *this* patent cover?
You might think that it would be easy to tell exactly what a patent covers, but that is far from the case.
Patents can be divided into a number of sections, but I think the most meaningful division is between “claims” and “everything else.” The claims are found at the end of a patent (or at the beginning, depending on where you’re viewing them online) and start with something like “we claim. . .” and then follow with one or more numbered paragraphs. A patent only covers what is claimed, but figuring out what is claimed can be a task in itself.
The rest of the patent is a support system for the claims. If a claim says something like “means for attachment of a first edge of a first panel and a second edge of a second panel” then somewhere in the rest of the patent has to be some explanation of what that means; claims typically make no sense on their own. That was the first draft of a clause claiming a zipper, and probably didn’t tell you much of anything on its own. If legalese is the confusing ramble that often flows from a lawyer, then patent claims can be some sort of steroid and espresso fueled legalese
If you have any question about whether something is patented or if you’re infringing a patent you really need to have a patent attorney analyze the patent and draft an opinion letter for you. Unfortunately, you can never be 100% sure what a patent covers until a court tells you what the terms mean, but an opinion letter from your attorney can go a long way in keeping you in the clear.
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