Create, Consult, Control
News & commentary on intellectual property issues.
Aug312010 | Steve O'Donnell
A City Authentic
Recently, the city of Lancaster, PA launched a new brand--“A City Authentic”--with a little square rose logo. Within a few days, someone posted a clip on youtube pointing out that the logo has already been in use. Oops. What could the city have done to prevent this embarrassment?
The city is not a client of mine, so I can’t speak with any authority on what they did, or didn’t do. My suggestions assume certain facts I don’t have, but are general enough to apply to any branding action.
First, the city’s contract with their designer should have included a warranty of non-infringement. Basically, the contract should have stated that the designer warrants that the design is original and doesn’t infringe on any one else’s copyright or trademark and that the designer will shoulder any legal actions to the contrary. That alone would have saved the city some embarrassment since it could have shifted the blame to the real responsible party.
Second, as noted in this article from Lancaster Online the city registered the logo with the copyright office. Presumably, both the city and the city’s design/marketing company thought that doing so would “clear” the image. That presumption fails for a couple of reasons. Copyright protects original works of authorship, and the logo is obviously not original. Any copyright action trying to defend this logo will probably fail at the motion to dismiss stage. Also, the logo is being used in a trademark sense, so it should have been vetted through the trademark application process, which is generally more robust than the copyright registration process.
If they had contacted me or another trademark practitioner, would the problem have been caught before it was used? It’s difficult to say. I haven’t searched for the mark since learning about the problem because I don’t think there is any way I could divorce myself from the knowledge that a problem exists. However, if the trademarking registration process had been completed before the brand was launched, the city would be able to point to that as proof that their use of the logo was substantially dissimilar to any other use of the graphic.
Lastly, if I, or someone else, discovered the similarity to another logo, a simple license agreement could have been drafted to clear the city’s use of the graphic.
Now, the city has to engage in damage control and will probably have to spend more money on that and on possibly changing its branding than it would have if it had consulted with me or another intellectual property attorney in Lancaster.
Jul152010 | Steve O'Donnell
Does downloading really hurt DVD sales?
The movie industry often blames flat or decreased DVD sales figures on file sharing, but are those that download the same group that would have otherwise bought a disc?
I don't know the answer, and I don't have any data to support a position, I was just thinking about this the other night and would like some feedback.
On the one hand it makes sense that at least some people wouldn't buy something they could get for free (even if that meant infringing a copyright and running the risk of getting caught). On the other hand, if movies suddenly weren't available through file sharing avenues anymore, how many people would move to Netflix or similar, and how many would start buying discs?
There are four options (maybe more): downloading, borrowing, renting, and buying. If downloading is removed, and you don't have a friend that already owns a movie, then the next cheapest option is to rent it. Buying is still quite a bit more expensive than renting.
I suspect that the businesses getting hit hardest by movie downloading are rental places, and since rental places don't seem to be complaining about their bottom-line, maybe movie downloading isn't hurting film makers.
I'm only talking about downloading movies out on disc. Movies still in theaters and other types of media all have their own issues.
What are you thoughts?
Jun252010 | Steve O'Donnell
When the "little guy's" copyright is infringed
This morning @TimothyPONeill on Twitter pointed out at article that referenced a website that highlights a few cases of small artists getting their work infringed by bigger fish. Uff-da, how’s that for full disclosure? Why yes, I am originally from Minnesota, why do you ask?
Take a second and look at some of the examples listed at the well named You Thought We Wouldn’t Notice. Note that these are reports originating from the artist themselves, and not necessarily someone that knows anything about copyright law. Some of the examples are just as likely coincidences as they are infringements, a few probably wouldn’t survive a motion to dismiss, but others, well some of them are simply blatant copying.
What is an independent artist to do when some thing like this happens? Well, honestly, for most, there isn’t much to do. If the copyright isn’t registered, damages are probably limited to actual damages and an court order telling the infringer to stop. For most cases, it probably doesn’t make economic sense to sue on an unregistered copyright.
There are still a couple ways to address the issue. Sometimes the infringement was a mistake (believe it or not, that happens) and other times the company also got ripped off by someone claiming to be the artist. In that case, a letter explaining the issue will probably result in some relief, or at least a check. If that doesn’t work, one might be able to pressure the company through some online forum, blogging, Twitter, etc and drawing attention to their infringing activity. Other than that, options are slim.
On the other hand, registering a copyright is fairly straight-forward and rather reasonably priced. Doing that gives an artist a lot more power when it comes to dealing with an infringer because instead of just actual damages (which can be an immense pain to prove) and an injunction, registration allows one to opt for statutory damages. Lets say some company takes a photo, puts it on a t-shirt and sells 100 shirts at $20 each. For actual damages the artist may have to demonstrate what percentage of the $2000 in sales was due to the infringed work. If we’re looking at statutory damages, the calculation is between $750 and $30,000 (possibly up to $150,000) PER infringement. So those 100 shirts are likely going to cost the infringer a lot more if the case goes to court.
I know which position I’d want to be in if I was suing an infringer.
Apr202010 | Steve O'Donnell
What I learned at the 2010 Launch Music Conference
It’s been a long time since the last music conference I attended (when I was on the other side of the fence). It’s interesting to see how little has changed over the last 20 or so years, but what can we do to change the things that should change?
I had a table at the 2010 Launch Music Conference last weekend and met a nice group of musicians and promotional professionals (and handed out a lot of brochures). It’s oddly comforting that some things have remained the same over the years, and probably will forever--musicians still wear genital-crushingly tight jeans and spend a disproportionate amount of time on their hair, they still get tattooed and still wear boots. Unfortunately, musicians still get screwed over. I’m not going to convince anyone to spend less time on their hair (and I’d never try) but hopefully I can convince someone that with a little planning, and a little legal help, they can avoid some of the most common headaches they’re likely to run into.
First off, a poor-man’s copyright isn’t worth the postage. Just don’t bother. Copyright registration is relatively inexpensive and quick. Copyright is also one of the few things that can benefit from an economy of scale, i.e., the more tracks you register at once, the less your attorney is probably going to charge you for each registration.
Secondly, about your band’s name, someone’s already using it. Ok, maybe that’s not the case, but you should assume it is, at least until you do some research and make sure that it’s not. Also, even it it’s all yours today, what happens when someone across the country comes up with the same name? What if they get picked up by a label before you, and register the name as their trademark? Do you then have to change your name? The best thing to do is to register a trademark for you band’s name. Maybe it doesn’t make sense right now to spend $1000 or so right now on a federal registration, but a state registration is a good first step, and probably a lot cheaper.
Thirdly, homemade contracts aren’t necessarily better than no contract, and might be worse. On one hand, I guess it shows to that punk isn’t dead, the DIY attitude is still thriving, but the business side of things should be left to the business people. No episode of Behind the Music contains the line "I'm sure glad we never hired a lawyer."
The biggest problem I heard was bands just not getting paid. Whether your agreement is for a flat payment or for a percentage of the gate, a lot of venues don’t like to pay musicians. The best way to avoid this is to have a contract upfront, if possible. It seems a lot of (especially smaller) venues shy away from contracts and think you should just trust them, maybe so they feel better about not paying. If that fails, the natural inclination is to resort to a little violent self-help. Generally, that’s not the best way of doing things and can lead to some other problems, such as not getting booked anywhere but the police station. Something that’s usually pretty simple and straight forward is a District Justice (Small Claims) lawsuit. These suits can be handled for a pretty small filing fee and without a lawyer, although it’s always a good idea to hire a lawyer if you can--some may take your case for a cut of what you win. Small Claims is limited (in PA) to claims under $8000 so if your agreed fee was more than that, you’ll need to file somewhere else.
Lastly, I also learned that some people like to dress as members of the Imperial Fleet and walk around the convention center.
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
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