Create, Consult, Control
News & commentary on intellectual property issues.
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
Oct312009 | Steve O'Donnell
Architecture Copyrights
There are two distinct types of copyright protection that architects should obtain for their designs to protect their intellectual property.
The first is copyright in the blueprints themselves under 17 U.S.C. §102(a)(5). This registration will protect the plans, but curiously, won’t prevent someone from taking the plans and using them to construct a building.
The second route is to register the plans as an “architectural work” under 17 U.S.C. §102(a)(8). This can prevent the construction of a building but likely won’t prevent a client from altering the building.
Registration of the copyrights is rather inexpensive, especially when compared to the benefits they confer. There is no reason why an architect should choose to not secure their copyrights.
Of course, an architect is free to contract for additional rights or transfer any rights to a client if there is some need for that.
Feel free to Contact me to schedule a review of your contracts and intellectual property protection needs.
Photo licensed under the Creative Commons Attribution-Share Alike 2.0 Generic license.
Oct032009 | Steve O'Donnell
Hey dude, don't fear TI. Take a calculator and make it better
For the geeks that came before me, it was the slide rule; for those that came after me it's probably a Linux tablet; but for those around my age, it was the graphing calculator (specifically the TI-81). It was something you could carry like a badge of your geekiness, warning others that they'd probably work for you at some point. Now, Texas Instruments is threatening the programmable calculator geek elite in what appears to be a rather poorly thought out legal and business strategy.
What does a true fan of, well, anything, do with the subject of their fandom? They deconstruct and reconstruct it. Think of it, if you really love music, you make your own, if you really love a show you might write fan fiction or analyze the canon to death. If you really love technology, you tweak it and make it better. So it's no surprise that a group of programmable calculator enthusiasts have taken it on themselves to modify their calculators.
Of course, nothing worth doing is easy, and installing a homebrew OS on a calculator is worth doing, so of course, there have to be hoops. The main hoop is that the Texas Instruments calculators check the signature of software before allowing it to load on the hardware. In order to find the private keys that could be used to unlock the hardware, the public keys were analyzed via distributed computing. Once the key was discovered, the hardware could be unlocked and calculator owners would install their own operating systems.
One might think this would make TI happy. After all, between notebooks, netbooks, tablets and iPhones, I'd think that the market for programmable calculators was not as big as it once was. Of course no one asked my opinion.
TI has instead decided to fire off cease and desist letters under the theory that the anti-circumvention provisions of the Digital Millennium Copyright Act give TI the power to force the suppression of the keys. I think TI, or more appropriately, TI's attorneys are reading even more into the DMCA than there already is and there are some problems that TI would encounter if they tried to assert their claims in court.
First, the DMCA, among other things, prohibits circumvention of technological measures put in place to prevent copying files as well as the distribution of circumvention tools. But, the operating system and boot code on the calculators is not encrypted, so no circumvention is needed to get to it. Second, the DMCA explicitly allows people to reverse engineer code in order to achieve interoperability with other software, such as a homebrew OS. Lastly, there needs to be some nexus between the actions and copyright infringement in order for the DMCA to attach. In this instance, the calculator homebrewers weren't distributing TI's copyrighted code, but were installing their own operating system on their own calculators, so there is no copyright infringement.
Why is TI challenging these homebrewers? I can't say. I don't understand it. I would think that the possibility of selling some more calculators would be more attractive than threatening their remaining customers. Now, I must admit, even though I don't think TI would have much chance in court, that doesn't make it so; the courts have not (yet) ceded ultimate authority to me. But even if TI does have the legal ability to shut down homebrewers I fail to see how they can benefit from threatening their customers.
Photo licensed under the Creative Commons Attribution ShareAlike 3.0 License.
Sorry about the post title.
Jul282009 | Steve O'Donnell
Open Source Chili
When I'm not managing my law office, writing or playing Wii Sports, I like to cook. As a patent attorney and cook, one of the most common questions I get is “can I copyright/trademark/patent my recipes?” The answer is a qualified “no.” but you can protect them as trade secrets.
Copyright protects artistic expression, so it can protect a story or narrative attached to a recipe, but won't give any protection to the recipe itself. There is an argument that cooking is an art so such artistic expression should be copyrighted, but that won't work. A particular dish may be art, delicious art, but its recipe is at least partially useful in that it instructs a reader how to make the dish. In cases where the artistic elements of a piece cannot be separated from the useful elements then the usefulness trumps and copyright will not protect it. Useful items can be protected by patents, but probably not recipes.
Unlike copyrights, patents undergo a ridged examination proceeding and must satisfy a number of requirements. For recipes, the big issues are probably going to be novelty and obviousness. That muffin recipe might be great, it might be the best muffin I've ever tasted, but based on all muffin recipes to have ever existed isn't there some prior art that teaches the same thing? Or maybe two or three other recipes that teach certain aspects of the recipe? It seems to be a very difficult requirement for a recipe to meet. Another requirement that could be a problem is utility, patents will only issue for useful goods. Although the level of usefulness needed is very low, I'm not sure that “delicious” would cover it. On the other hand, some recipes are patentable, such as this one for savory baking chips and this one for treating chest pain with lime juice. Granted, the lime juice patent is not much of a recipe, but it's one of my favorite patents and I wanted to use it. It has expired because the patentee didn't pay a maintenance fee, so if you feel a touch of angina coming on and want to try sucking a lime, go ahead. Let me know how that works out for you.
Trademarks also don't fit the bill. Trademarks identify the source of some goods, even if you printed an entire recipe on a t-shirt and tried called that your trademark, that wouldn't stop someone from taking your recipe and using it. It might stop them from being able to sell their own t-shirts marked with the same recipe, but why anyone would want to do that is beyond me.
What one is left with is trade secrets. As the name implies, trade secrets are secrets. They have served Coca-Cola and KFC quite well over the years. As an aside, I once knew someone that did some engineering work for KFC. He was able to automate 10 of the 11 secret herbs and spices, but the last one was added manually by a guy that would come out with an unmarked brown sack containing the most secret of the secret ingredients. Trade secrets won't help you at all if someone figures out your recipe, just look at how many copycat recipes one can find, so some extraordinary measures are taken to keep these secrets.
So, the bottom line is, if you don't want people to know your recipe, don't tell them.
Now, on to my non-patented, non-trademarked, non-copyrighted chili recipe:
Open Source Chili
from Steve O'Donnell (http://www.3cpatents.com)
time 4 hours
yield 6 servings
ingredients:
3 cans beans
1 t dried thyme
1 t dried oregano
1 t dried coriander
1 t dried red pepper flakes
4 t cumin powder
3 garlic cloves minced
1lb beef chopped
2 beef bouillon cubes
4 slices bacon chopped
1 red pepper chopped
1 onion chopped
4 oz mushrooms chopped
1.5 cup ketchup
1 tomato chopped
3 c water
2 oz corn chips
directions
1. Throw everything into a crockpot and cook on low about 4 hours or until done.
2. I trim the beef, usually a tip steak or something on sale and add it raw to utilize the rendered fat, lean hamburger can also be used, or any other protein you like. The bacon also goes in raw.
3. The corn chips are the “secret.” They disintegrate and add body and flavor. Without them, or masa powder, you get chili-soup instead of chili. I prefer Fritos, because if you buy a bigger bag you can make Frito Pie.
Chile pepper image from Forest and Kim Starr
Jul232009 | Steve O'Donnell
Robbing the logo graveyard
What happens when a company goes out of business or rebrands itself? Can someone else step in and start using the abandoned trademarks? Sure, but make sure it's dead before you dig it up.
The strength of a trademark comes from its use. A trademark that isn't used, doesn't identify the business that owns it and doesn't have much, if any, power to go after someone using a similar mark. If an established mark is abandoned, it will take a while before any of it's brand-recognition muscle will deteriorate to where someone else could appropriate it.
For example, Lancaster General Hospital recently underwent a brand overhaul and they now have a spiffy new logo and a new name.
This is the old logo. I like their old logo, the hands holding a person seems like the perfect image for a hospital to convey.
The new logo is more colorful and abstract. For some reason it reminds me of the Tron video game. Generally, abstract is good for trademarks and over time, this logo will become associated with the hospi. . . excuse me, health system.
Could someone use the old logo to mark their new business? It is a good logo, I could see it being used by a chiropractor, massage therapist, or any one of a number of health care businesses. What, if anything is stopping people from dusting off and repurposing old trademarks?
There are at least two things to think about if you want to use an abandoned mark: the first is whether the mark still has any breath left in it; the second is whether there is any copyright issues to worry about.
If the mark still has some identity to it, then a new use is an infringement. It is going to take time for people to forget that an old logo used to be associated with a certain business. For example, if people see a massage therapist using the old LGH logo, they will probably think that the therapist is associated with the hospi. . . health system. It may be years before people in Lancaster, PA forget about the old LGH logo to the point where someone else could use it in Lancaster. That might not be such a concern if the new user wanted to use the logo in another state where people don't recognize it.
Another possible problem would occur if the logo was copyrighted. Copyright duration in this context has nothing to do with whether something is used or displayed, so even if there wasn't a trademark issue a new user might not be able to make the logo its own.
The possible problems are usually much smaller if a business has gone out of business than if they've rebranded, but not always. Often a business will sell its IP when dying so it can be an issue to figure out if someone else owns the rights to the mark and is planning on resurrecting the brand.
In short, if you want to revive someone else's abandoned logo as your own you should speak with an attorney before you start printing your business cards.
Jun252009 | Steve O'Donnell
Ring tones as public performance of songs
ASCAP thinks your ringtones are copyright infringement. Not just ringtones you've made yourself, but maybe also those that you've purchased from your carrier.
The Electronic Frontier Foundation has posted a brief from ASCAP (The American Society of Composers, Authors and Publishers) wherein their attorneys argue that a ringtone constitutes a public performance of the song and demands to be paid.
I don't think I would offend anyone if I said that copyright law is a confused and confusing creature that should be mercifully killed in order for something else to take it's place. Copyright law reaches its peak as an arcane body of law when discussing how it pertains to music.
One of the more problematic copyrights is the right of public performance. One may think it reasonable that a recording artist should be able to stop another from playing their music in public (we'll assume that the artist is the copyright holder). For example, one might not want their music to become associated with a group that they don't support (this came up a few times over the last Presidential campaign). It gets a little dicier if you change some of the facts, what if instead of a rally, the music is played at a small group meeting that the artist doesn't like, what if it's blared out of a car that the artist doesn't like, or played in a steakhouse when the artist is a vegetarian? How much control does the copyright holder have over their music once it's released? How much control is enough without being too much?
The amount of control the copyright owner retains in the absence of a license can be hard to discern. In most instances public performance licenses are used to clear music so the entity playing the music is in compliance with the law and can avoid penalties later, but I don't know of anyone that would purchase a license so they would turn their car stereo up and drive with the top down.
Turning to ringtones, ASCAP seems to think that the few second sample that your phone plays should count as a public performance and that someone should pay for it. This doesn't mean that you should worry about being sued next time your “Baby Got Back” ringtone goes off, 17 U.S.C. § 110(4) would protect your use. . . provided you don't charge others at your table to listen to your ringtone. Rather, ASCAP thinks that the ringtone providers should pay a public performance license fee.<
ASCAP's theory of infringement is a long shot and will almost certainly fail. What is troubling is that there is just enough uncertainty about what constitutes a public performance that this will escape Rule 11 sanctions.
Jun252009 | Steve O'Donnell
WKRP in copyright licensing land
If you're old enough to remember when WKRP in Cincinnati was first broadcast you might remember the important role that current music played in the show. At times the soundtrack was almost a character. If you've since caught the show in reruns or have purchased the DVD set (I'm watching it on Hulu) you've probably noticed that the music is changed. Some fault lies in less than ideal licensing work by CBS's attorneys, some of the fault lies in greed.
One problem is that, at the time, no one foresaw the day where studios would sell shows to the public, so when the licenses to use the music were negotiated, the right to include the music in future releases didn't even come to mind. Without those licenses in place, the studio can't reproduce the music on a DVD release.
Going back and obtaining those licenses is an option, but an expensive one. The music copyright holders (who aren't necessarily the performers) are going to want more money, and if the music is integral to the show, they will use that to extract higher licensing revenue, which will drive up the price of the DVDs and likely decrease the number of box sets that will sell. Consequently, the studio will likely make less profit on the box sets since fewer will sell.
This problem is not unique to WKRP, similar licensing issues are keeping a Wonder Years box set off the shelves. Music licensing also was an issue in releasing the Freaks and Geeks box set, but in that case the rights were obtained, resulting in a set priced at $70 for the 18 episode run.
Another option is the one used to bring the first season of WKRP to market, the music was changed or edited out. In the case of a show that so heavily depended on music, the result is horrible to fans. Such backlash may be the reason why the other seasons haven't been released yet.
Still, it's a great show, and if you haven't seen it, or haven't seen it in years, you should check it out.
For the curious, one fan compiled list of the changes made to the episode's music posted at http://zvbxrpl.blogspot.com/2007/03/wkrp-dvd-not-ok.html
Jun102009 | Steve O'Donnell
Podcasts, music and fair use
I subscribe to a couple dozen podcasts and usually get to listen to at least some of them. One thing I've noticed is that a lot of them play music clips as their intro and outro. One would think that a short clip wouldn't create a legal problem, but that isn't necessarily the case.
That short clip is copyright infringement. Now, I'm sure everyone that is using such a clip thinks that it falls under fair use, but unfortunately, that isn't clear. Also, most people don't realize that fair use is a defense to infringement, but doesn't necessarily keep you out of court.
The defense of fair use is spelled out in 17 U.S.C. § 107. There are four factors that need to be taken into consideration:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3)the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4)the effect of the use upon the potential market for or value of the copyrighted work.
There are stacks of cases applying these factors and the only really clear rule to emerge is that each case is different and requires a fresh analysis based on the specific facts. There are a number of guidelines that people think will protect them that won't. Among these misconceptions are that all non-commercial use is fair use, that acknowledging the source makes absolves one from liability, or that de minimis (minimal, short samples) copying is fair use. These misconceptions can lead people into a false sense of security, especially the de minimis assumption, when in fact, one court essentially eliminated that defense and ruled that a two-second sample is copyright infringement.
Even if your use is fair use and you win, that comes after a potentially very long and expensive lawsuit. There are a couple ways of avoiding the issue entirely: obtaining licenses to the music, which for small niche podcasts probably doesn't make any economic sense; or using royalty free, public domain or Creative Commons licensed music. Just make sure that if you use Creative Commons licensed music that you're complying with the license.
And before anyone asks, I don't have a great explanation for why Girl Talk has not been sued yet.
May112009 | Steve O'Donnell
Creative Commons licensing
The Creative Commons licenses allow people to share their intellectual property with others while retaining certain rights to the work. It sounds good, but it can be it's own source of problems.
For the sake of argument, lets say that “Artist” downloads a number of Creative Commons (“CC”) licensed photographs and makes a collage of them. Under the Attribution clause of the licenses, Artist would need to indicate the names of the original creators. That doesn't sound too onerous, if Artist is only using a few CC works, but at some point, the inclusion of names detracts from the Artist's own work in compiling and organizing the separate works. Additionally, Artist would have to ensure that the CC license allows him to do what he wants to do. Some flavors of the license would allow Artist to make derivative works, others don't. Similarly, some flavors would allow Artist to sell prints of his collage, others don't.
If someone doesn't comply with the CC license then the license terminates and they could be subjected to a copyright infringement suit. If the original author thought this through, the copyright on the piece would be registered within three months of first making it public. In that way, if the license is violated there are statutory damages as high as $150k + costs and legal fees that are available to the original author. 17 U.S.C. § 412, 17 U.S.C. § 504.
In short, nothing is ever easy. Just because a work subject to a Creative Commons license, don't think that you can use it for whatever you want. Read the license, and if you have any questions contact an intellectual property attorney.
Apr272009 | Steve O'Donnell
Copyright issues for freelance web designers
By it's nature, web design is well suited for freelance work. Unfortunately, many freelance developers use form contracts that may giving away more than necessary.
I have a small stack of web dev form contracts that I've collected over the past few years. I've been able to divide my sample contracts into two piles: Those I wouldn't sign as a developer and those I wouldn't sign as a client.
Those that I wouldn't sign as a developer have broad intellectual property grants. I have one that grants all intellectual property rights to any work done pursuant to the development agreement. Taken on it's face, that could mean that the client owns all the copyrights to the final design AND draft designs that were rejected. Additionally, the client could prevent the designer from showing that job as part of their portfolio. Another possibility is that the client could also sue the developer if the developer designs a similar logo for another client.
In the other stack are contracts where the designer retains complete control over the copyrights but grants the client a license to use them. Those contracts usually do not mention a grant to use the designs in other promotional materials and something about what happens if the client's business is sold. If it isn't clear that the client can transfer the license that might be a sticking point in negotiations to sell the business. If I was having someone design a logo for my website, I would expect to be able to use the same logo on business cards, brochures, ads, etc, and be able to transfer the design with the business.
The form contracts I've seen fail to address the very real possibility that the copyright will be infringed. The owner of the copyright is the one that can enforce it. If the developer owns the copyright, the client can't enforce it on his own against a third party. Similarly, if the developer transfers the copyright to the client, then the developer is unable to enforce the copyright against someone infringing it. The problem with this situation would occur if either the developer or the client didn't care about the infringement for whatever reason, but the other party to the contract does care and wants to enforce the copyright.
I have yet to see a freelancer's form contract that addresses the possibility of a design patent coming out of the job. What would happen if the developer granted a full copyright assignment to the client, but separately patented the design? I'm not sure of the answer, but it is something to think about.
What is a better solution? The answer to that depends on what both parties want out of the transaction. Usually, both parties want the ability to enforce the copyright and to fully be able to use it themselves. That is probably not possible in most cases.
Contracts are a formalization of an agreement reached after a negotiation. If both parties simply sign a form purchased from an office supply store, a form neither party really understands, both parties are doing themselves a disservice. The better approach is to engage a lawyer that's looking out for your interests in the transaction and can advise you on potential pitfalls that a person working the register at the office store can't do.
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