Does Provisional Trump Regular Patent Application?

Dear Rich: Can you answer a question about provisional patent applications? We've invented an automobile accessory and we filed a provisional patent application. Then we filed a regular patent application. We recently learned that someone else has filed a regular patent application before ours (but after we filed our provisional). Do we lose the race because they filed a regular application before us? Under current patent law (first-to-invent) there is no race to the patent office. The issue is who invented the device first. That said, filing dates are important because they often reflect the date of invention (or constructive reduction to practice). Your filing of a provisional patent application, assuming it accurately reflects the invention in your regular application, can be used as prior art to stop a later inventor (or filer in this case) from obtaining a patent. In summary, if you wrote a good provisional patent application, you're probably the winner. This rule was demonstrated in a court case about a year ago. An inventor, Giacomini, filed a patent application claiming a method of selectively storing sets of electronic data. Another inventor, Tran, filed a patent application after Giacomini for a similar invention. However, Tran’s application was based on a provisional patent application that accurately described the invention and was filed before Giacomini’s application. In that case, the Federal Circuit held that Tran as “first inventor,” could claim patent rights and use his patent application as prior art against Giacomini. In re Giacomini, 612 F.3d 1380 (Fed. Cir. 2010).
Would the outcome be any different under the America Invents Act? On March 16, 2013, the U.S. switches to a first-to-file system. Under that system, the first inventor to file gets the patent. So, the outcome would likely be the same as your provisional patent application would be considered the first filing. Again, that's assuming your provisional patent application accurately reflected the invention claimed in your regular application.

Can I Reproduce Images From Crystal Bridges Museum?

Dear Rich: I live near Crystal Bridges, America's newest art museum. Crystal Bridges is the brain child of Wal-Mart Heiress, Alice Walton and is a billion dollar museum. We here in Northwest Arkansas are so excited to have access, free access in fact, since the museum has been given an endowment by Wal-Mart that will allow the non profit museum to be forever free to the public, to see great American art from colonial times to the present. Many of these artworks are early works (pre 1923) and are part of the public domain. I have a new website I’m developing for public domain images. Crystal Bridges allows photographs to be taken of the art as long as a tripod or flash is not used. However, their photography policy states that photos of the art are only to be used for personal use. I take this to mean that they can not be used on my site which shares images with the whole wide web world. Am I correct in my assumption that they don’t have the right to restrict the use of my photographs of their public domain artworks? I am not trying to claim copyright of the photographs, since they will be merely reproductions of public domain works. Whether you can reproduce imagery that's in the public domain really depends on one thing: Did you enter into an agreement with the museum not to reproduce the images? You're probably thinking, "I didn't enter into any agreements with Crystal Bridges." But obtaining an admission ticket, if the ticket contains certain terms and conditions, may qualify as the type of agreement we're talking about. This may seem incredibly creepy -- to condition admission into the museum based on your promise not to reproduce public domain imagery -- but it's not uncommon in the copyright world and these so-called licenses are generally enforceable. Here's what public domain expert Steve Fishman has to say about the practice in his excellent public domain guide.
Many copyright experts believe that licenses imposing copyright-like restriction on how the public may use public domain materials should be legally unenforceable. This is because the federal copyright law preempts (overrides) state contract law and prevents people from using contracts to create their own private copyrights. Moreover, there are sound policy reasons for holding such license restrictions unenforceable—their widespread use diminishes the public’s access to the public domain. However, almost all courts have ignored the experts and enforced these licenses. 
What's a valid license? To have a valid license, you and the museum must assent to the terms and conditions, typically at the time when you enter. If the admission ticket contains no restrictive provisions and you never assented knowingly to such conditions, there probably is no license in place. For example, it's unlikely that an after-the-fact assertion of rights -- a sign on the way out of the museum that tells you that you cannot reproduce the imagery --  is legally enforceable as a contractual license.
What about the Crystal Bridges website? Each page of images at the Crystal Bridges website contains the statement:
Works of art in Crystal Bridges' collection are protected by copyright and may not be used without permission. For more information visit Rights and Reproductions. 
That sounds foreboding but we're not sure that statement creates a binding license. It reminds us more of a tip jar, left in view in the hopes that its presence will trigger a hoped-for result. The museum would have a much stronger argument that its terms and conditions are binding if the user had to assent to these terms and conditions -- that is, click a "Yes, I Agree" button to access the works. The fact that the site includes "copyrighted" photographs of public domain artworks also doesn't affect your ability to copy and reproduce that artwork. Courts have held that "slavish copying" of public domain works does not make the photographs protectible under copyright law. Although we're not a betting blog, if we had to bet, we'd place our money on the fact that currently public domain images at the site can be copied and reproduced without permission.
One last thing. Just because a painting was created before 1923 doesn't mean it's in the public domain. It must have been published before 1923. You may be surprised to learn that displaying a painting in a museum, for example, does not amount to publication. Publication (scroll down) refers to reproduction of the image, for example in a magazine, post card, or book.  To learn more about these tricky public domain rules, check out Fishman's tome.
One other last thing. We're not encouraging you to get chased by the museum and we appreciate the fact that great art is being made available to the masses at no charge. But is it really free? The driving force behind these efforts to restrict reproduction is a desire to jack up gift shop sales and generate licensing revenue. We hope the museum rethinks its desire to reclaim and restrict rights to artwork that our government has designated to be freely available to the public.

Can I Use Artwork Created from Coloring Books?

Dear Rich: My daughter, who has Down syndrome, loves to color design coloring books such as Ruth Heller's Designs for Coloring. She has a good eye for color and puts hours into each picture. She would like to submit her work to a book compiled by Woodbine Publishers about Down syndrome artists. Is she allowed to? We think you should try to get permission first. Assuming you can get in touch with the copyright owners, we believe they are likely to grant permission. We think that because the reproduction won't harm their sales, it's the right thing to do, and it's good public relations. If you can't get permission, we think you can probably get away reproducing the imagery without permission (though we can't guarantee that result).
How do you get permission? The copyright is likely held by the Ruth Heller Trust Fund but we think the place to start your request is with Grosset and Dunlap/Penguin Putnam Books for Young Readers, the publisher. They have an online permission system and a set of FAQs explaining the process and their online database indicates they control about a dozen Ruth Heller books. If the coloring book you are using is not covered, perhaps G&P can lead you to the proper source or to the trust.
Can you use it without permission? We think including one or two images (with proper attribution) would probably not trigger a cease and desist letter. Although the copyright pages of the coloring books don't specifically grant permission for uses like yours, a coloring book is an implied invitation to create a derivative work. It can also probably be argued that the sale of a coloring book implies a limited right to post and reproduce the resulting "colored-in" works. And for what it's worth, the company has not objected to the posting of colored-in versions of their imagery at Amazon. Again, we can't guarantee that the copyright owner won't object to your use, but it's difficult to imagine that they would.

Making Merchandise from Video Game Characters

Dear Rich: For a while I have been making digital merchandise based off of famous movie and video game characters. At first I wasn't really making any money off of them. I know now that not making a profit doesn't change anything as far as trademark violations, but I thought it did before, so I stopped selling the merchandise a while ago because I had started making real money and didn't want to make money off of other people's creations without their permission. But now, after so many months, I find myself still wanting to make and sell that merchandise, and other people are asking me to as well. Its a bit frustrating, because I see other people creating things based off of trademarked characters, both in my market and in other markets on the internet. Like all of the Star Trek merchandise you see on Etsy. What's the likelihood of a small one-person business like me getting permission to create merchandise like this? If it's possible, how do I do it?  The likelihood of getting permission is very slim. Owners of video game characters usually only deal with established merchandisers (with serious sales voodoo). Also, they often enter into exclusive licenses. That means they can't grant permission to you without violating their license with someone else. It's possible that if you were offering a new product category, you might have a chance. But that's tough to pull off. (PS. Here's the lowdown on trademark licensing.)
How do other people get away with it? It's a matter of odds. The owners of valuable character properties usually put their resources into pursuing the bigger fish, and for the most part, that often bypasses individual sales at Etsy or eBay. So, unless the trademark owner is intending to make an example of a small fry infringer, a cease and desist letter may be sent, and that's sometimes the end of it.
What should you do? We wish it wasn't frustrating to get permission. Like, wouldn't it be great if you could pay "per impression" for reproductions of licensed characters.  Of course, that may blow any standards of quality ... but hey, merchandise happens. Anyway, infringement is always a gamble and we'll leave the risk assessment to you.

Snafu Caused Loss of Domain Name: Now What?

Dear Rich: I had a URL (domain name), connected to a network of 3 sites. Due to an email account error, the registration was lost. The day it went public and I found out it got bought. I have been running the domain name for a mortgage network and I've owned this site since 2004. I noticed the place-holder page put up for the domain is for a company that is in the Cayman Islands so I am sure it is a crook who bought it for cybersquatting or to steal it. I have sent the company a letter saying they must release it or they will get a cease and desist and I will file with ICANN. What are my rights, what can I do? We're sorry to hear about your domain name loss. Apparently there are companies out there who wait for domain names to expire and then snap them up. Sometimes, the purchase is made in order to sell it back to the previous owner (who is often unaware that the domain has even expired). Sometimes, it's purchased because the new buyer believes that the domain still has some SEO value and so, it can be sold to a third party who can milk it for a few percentage points in Google Analytics.
Is it cybersquatting? Cybersquatting is when someone buys and sells a domain name with the bad faith intent to profit from another company's trademark. (We explain it in more detail, here.) For example, it would likely be cybersquatting if (1) the company set up a site that diverted your customers, (2) the company, in advertising the domain name for sale, mentioned that the potential buyer could trade off your previous traffic, or (3) the company set up a page with Google Ads listing you and your competitors. If the company contacted you, unsolicited, after buying the domain and offered to sell it back to you at a much higher price, that would likely be cybersquatting, too. It would not be cybersquatting if the company set up a non-competitive site for another company or if the company did nothing but set up a  blank page. That's because there's no proof of bad faith intent. After all, it's not illegal to simply buy and sell domain names (without bad faith).
Should you proceed to ICANN? You are unlikely to get the domain name back by sending threatening letters. Most domain name dealers are not cowed by legal letters. They know you can only get the domain name back by (1) filing a federal cybersquatting lawsuit (probably way too expensive for you), or (2) by seeking domain name arbitration at ICANN. If you go the ICANN route, your filing expenses are, at minimum, $1500. It takes six months, requires a considerable amount of paperwork and documentation and may cost more if lawyers are involved. Remember, it's not enough to say that the company bought your domain name, you need to prove bad faith. And of course, there's no guarantee you'll prevail (although complaining parties prevail in 84% of the cases). Many people don't want the wait or the uncertainty of ICANN so they simply contact the new owners and pay for the domain name -- often forking over a sum between $2,000 and $3,000 because that's how much they would likely end up paying in time and money for an ICANN arbitration.

Can We Use European Poster?

Dear Rich: I am an author in the process of publishing a book about modern day Europe. There is a poster (left) which was issued years ago by the Council of Europe, with a slogan which says "Many Tongues One Voice." We would really like to include this in our book but the publisher says we must first get permission from the Council of Europe since the poster is copyrighted. Could you advise as to the proper procedure to get this done? In case you're not aware, there are many who believe that Satan had a hand in the creation of this poster. We don't know if that contribution rises to co-authorship but we sure wouldn't want to run up against the Evil One in a federal court case.
Right, you had a question. The typical procedure for getting permission would be to contact the apparent owner of rights -- the Council of Europe -- and to ask for permission. Here's their contact information. Although the Council of Europe is a multinational organization --  a bit like the United Nations -- it can retain copyrights. For example, the Council of Europe is listed as copyright claimant for seven U.S. copyrights (although there is no registration for the poster). You can review their U.S. copyrights by searching at the Copyright Office. Click "Search the Catalog" and filter your search by "Name." If you can't get a response for your requests, document your attempts in the event that you decide to claim fair use. As we've indicated before, there are a line of cases that make thumbnail reproductions, whether in books or on the web, more likely to be excused as a fair use, especially when accompanied by commentary or criticism.

Does the VEOH Case Affect My Website?


Dear Rich: We're a web startup (a pre-startup, actually).  Can you explain the effect of the recent VEOH ruling regarding website infringement? Wow, a pre-startup! That sounds hopeful!
The case you're referring to -- UMG Recordings v. Shelter Capital, Partners -- has to do with the level of policing required by a website when users post infringing content. Veoh, a site that permits users to upload video content, was sued by Universal Music, after infringing videos were discovered on the site. Veoh had complied with all requests to remove content and had used software to seek out and identify infringing content, but some infringing music videos still made it on to the site.
DMCA as a shield. Universal argued that Veoh (our source for the kitty video) must have known of the "apparent" infringements and should not be able to use the Digital Millenium Copyright Act (scroll down) as a shield. The 9th Circuit Court of Appeals -- the first appeals court to rule on this issue -- held that the burden was on Universal to report the infringements to Veoh, stating,"Copyright holders know precisely what materials they own, and thus are better able to identify infringing copies than service providers like Veoh." The ruling doesn't shield websites from liability for infringement but it does permit websites to use the DMCA as a shield when the website has anti-infringement policies and has otherwise responded to all requests for takedowns.

Does Filing For Patent End NDA?

Dear Rich: If company A and company B have both signed a legal nondisclosure agreement (NDA) and then company A applies for a patent on the business plan covered in the NDA, does that make the information public and therefore make the NDA null and void? Information in a patent application becomes public when the USPTO publishes an application 18 months after filing. If the applicant does not plan on filing in foreign countries, the applicant can opt out of the 18-month publication program. If the applicant has opted out, the application will only become public if the application issues (or the applicant changes position on foreign filing). (We've discussed that previously, here.)
What happens after publication. Whenever the information is published, that information can no longer be protected as a trade secret and will not be subject to an NDA. That doesn't necessarily make your NDA "null and void." If other nonpublished information has been included as part of the NDA, that should still be protected. For more on the subject, check out our NDA site.

Can We Report Neighbor for Blasting Copyrighted Christmas Music?


Dear Rich: Every year, my neighbor blasts Christmas music (and some non-Christmas music) with a synchronized Christmas light show. As you can imagine he goes overboard and drives most of the neighbors crazy. We've asked him to turn it down (or off), complained to the authorities, and none of it does much good. We're thinking of suing him as a nuisance. One of the neighbors wondered if we could report him for playing copyrighted music without permission. Is that possible? To whom do we report it? That's the Christmas spirit! We can totally relate. We once visited a Dear Rich Staff member in the hospital at Christmas time and somebody down the hall was blasting 'Silent Night' on a toy piano (talk about an oxymoronic choice of material). What is a 'humbug,' anyway?
Right, you had a question. The neighborhood blasting of copyrighted music would likely qualify as a public performance (sidebar on right) under U.S. copyright law. In other words, it falls into the same category as playing music at a ballgame or at a bar, and requires permission. If it is done without permission, it would be considered an unauthorized use of the music -- that is, an infringement. The gatekeepers for almost all of these public performance rights are two organizations, BMI and ASCAP. They grant permissions on behalf of thousands of songwriters. They also enforce rights and sue organizations and individuals who publicly perform music without permission. You could report your neighbor to the appropriate organization although you would need to identify the copyrighted songs from the performing rights organization's repertoire -- for example, BMI has over 7,000 registered songs with the word "Christmas" in the title. The organization could then choose to enforce rights. That's where you might run into a problem. Following the strange flap over the Girl Scouts/Macarena debacle, performing rights societies might be gun-shy about going after a homeowner playing Christmas music in his cul-de-sac. We think you and your neighbors would be better served by handling this in the traditional American way -- small claims court.

What's the Meaning of "Relationships" Clause in Contract?

Dear Rich: I was reading the basic NDA on your website and I'm unsure of one clause you included. "5. Relationships. Nothing contained in this Agreement shall be deemed to constitute either party a partner, joint venturer or employee of the other party for any purpose." This is a confusing statement. Would you be able to explain what this means? Any help would be appreciated. Thanks! If you were reviewing an NDA at our NDAsforFree.com site, then the explanation should have been available to you by clicking on the hyperlink for "Relationships." If you were unable to access it, here's an explanation below. (Note that this clause is also sometimes referred to as a "No Joint Venture" clause, too.)
Your relationship with the receiving party is usually defined by the agreement that you are signing -- for example an employment, licensing or investment agreement. To an outsider, it may appear that you have a different relationship, such as a partnership or joint venture. It's possible that an unscrupulous business will try to capitalize on this appearance and make a third-party deal. That is, the receiving party may claim to be your partner to obtain a benefit from a distributor or sublicensee. To avoid liability for such a situation, most agreements include a provision like this one, disclaiming any relationship other than that defined in the agreement. We recommend that you include such a provision and take care to tailor it to the agreement. For example, if you are incorporating the NDA provision in an employment agreement, you would delete the reference to employees. If you are using it in a partnership agreement, take out the reference to partners, and so forth.

Can a Legal Notice Be Sent By Email?

Dear Rich: I got a cease and desist notice by email. Is that legal? How can they prove that I got it? Yes, a cease and desist letter has the same legal effect whether it is sent by U.S. mail, email, or as a text message. The two laws that confirm the acceptability of electronic notices are “UETA” (the Uniform Electronic Transactions Act), adopted in all states except Georgia, Illinois, New York and Washington, and “ESIGN” (Electronic Signatures In Global and National Commerce Act), a federal law. Unless some other law prohibits it, UETA and ESIGN permit the use of typical electronic notices. Put another way, under both of these laws, a legal notice cannot be denied admission in court simply because it is electronic (and not on paper). The key to admission in these cases is demonstrating authenticity of the email and receipt. So, if a lawyer sends you an email cease and desist notice, under UETA, that email is considered to have been “received” when your email server (the one connected with the your email account) receives the message from the lawyer. The email protocol used when sending email over the Internet confirms your address. However, demonstrating receipt may require discovery mechanisms to obtain your email server records. Note, that you are considered to have “received” the email even if it falls into your spam filter, provided that you have the ability to obtain the message from the filter or have control over the filter’s settings. Lawyer's often use a system such as RPost (http://www.rpost.com/) when sending electronic email notices.

How Do I Word a Copyright Disclaimer for YouTube?

Dear Rich: I've seen a lot of different statements posted by people at YouTube so they won't get sued over copyright infringement. What is the best thing to write to prevent getting sued? These statements -- known in legal parlance as "disclaimers" --  are intended to prevent (or at least limit) copyright infringement claims. The most common of the half-million disclaimers used at YouTube is apparently "No Copyright Intended" which -- despite its ambiguous meaning -- is about as effective as going 90 MPH in your car with a sign that says "No Speeding Intended." Other disclaimers state that the user is claiming fair use. Unfortunately, claiming fair use doesn't mean that the work qualifies as a fair use. Only a court can determine that. In truth, we don't believe that there is really any disclaimer (scroll to bottom of page) that would be effective in preventing a lawsuit if your video infringes someone else's work.
So what do you say? Knowing that disclaimers won't prevent a lawsuit, you might be able to limit damages in a lawsuit by stating something to the effect of "No copyright is claimed in [content copied] and to the extent that material may appear to be infringed, I assert that such alleged infringement is permissible under fair use principles in U.S. copyright laws. If you believe material has been used in an unauthorized manner, please contact the poster." Don't expect this to do much --  most copyright owners will bypass this and have it removed under a DMCA notice -- but it may set a more sympathetic tone for you as a defendant if you find yourself responding to a lawsuit.

Can Yoga Moves Be Copyrighted?

Dear Rich: I've been following the Bikram Yoga stories and it's still not clear to me. Can I practice Bikram Yoga techniques at my studio or will I get sued by the Bikram people? The jury is still out on the case you're discussing in which Bikram founder Bikram Choudhury sued a former Bikram practitioner who started a competing "hot yoga" school (Yoga To The People or "YTTP") for copyright and trademark infringement. We thought we answered a similar question a while back but we couldn't dig it up so we assume it was written in a parallel universe.
The copyright case(s).  Bikram and his competitors have been in and of courtrooms over the past ten years. One group of yoga practitioners sought relief after Bikram sent out a bunch of cease and desist letters in approximately 2002 and 2003. That battle ended in a settlement in 2005 but not before a court weighed in on a few important issues. The court determined that: individual yoga moves could not be protected; a compilation of moves might be protected if sufficient originality could be demonstrated; even if a copyright were granted for a collection of moves, it would be a "thin copyright" and would likely be limited to performing the moves in the exact sequence; and the performance of yoga moves did not necessarily amount to their publication. As for the use of heat as part of the sequence -- and who wouldn't want to be in a yoga room packed with half-naked sweaty people -- no protection can be granted for this "concept." In September of this year, Bikram started up again, this time going after YTTP for copyright and trademark infringement. Bikram has received several copyrights for books and other compilations. However, the Copyright Office announced last week that yoga moves are not eligible for copyright protection. Bikram's lawyers discounted that decision as meaningless because Bikram's copyright has already issued and is presumed valid. It's true that there is a presumption of validity associated with a copyright registration but it's a rebuttable presumption and courts periodically eighty-six registrations when the situation calls for it. This may prove to be one of those situations.
Can you use the trademark? Probably, the strongest claim that Bikram can make is for trademark rights -- specifically as to the use of the name, Bikram Yoga. Bikram hasn't made the mistake of Pilates and permitted the unlicensed use of his name. So, if he can demonstrate that the Bikram marks (and we're not sure what is claimed beyond the name)  have been used, he may be able to succeed on trademark infringement claims.
Can it be patented? We don't think a collection of yoga moves is patentable, an opinion shared by other patent practitioners and by the patent office, although it is possible to obtain patents on yoga products, like the yoga gloves and shoes, shown above). (And of course let's not make the sad journalistic mistake of confusing copyrights and patents.)
Bottom Line Dept. If we were a betting blog, we would bet that Bikram will fail in his current copyright case though we doubt if that will deter the celebrity attraction that is associated with his "brand." The takeaway point, however, is that, until stopped by a published court ruling, the company is likely to continue to aggressively "protect" its turf.





Will Negative Review of Art Reduce Permission Chances?

Dear Rich: I'm writing an academic essay on art criticism and some artworks I criticize and others I say better things about. In looking for free copies of these images, how do I handle the galleries whose artists are coming under critique? Is it ethical to hide the fact that they won't come out so well? I feel far more comfortable asking for free copies of images from galleries and museums in which the artist comes out better. We know what you mean about that ethical thing. The Dear Rich Staff has worked as a reviewer and sometimes we feel funny panning somebody's work even if we didn't have to ask permission for anything. That's because we know how much effort went into the thing and we feel bad deflating the tires, so to speak. On the other hand, everybody's a reviewer these days so maybe reviews really don't matter any more.
Right, you had a question. Obviously your chances of obtaining permission are reduced if you inform the person from whom you're seeking permission that you intend to pan the artwork. So, our suggestion would be not to mention it. Like Admiral Hopper used to say, "It's easier to ask for forgiveness than it is to get permission." Though some may disagree with that approach, we feel it's fine in this situation. After all, academic criticism is valuable and is intended to provide benefits to the artist and the public. So, we see nothing wrong with simply stating that you are preparing an academic essay and need a high quality reproduction of the work for reproduction with your essay. If you cannot get permission and you are going to produce a printed publication, you may be able to reproduce thumbnails under fair use principles -- at least that's been the trend recently for books and websites. And of course, though it may be expensive, some artwork can be licensed with few questions asked through sources such as VAGA and ARSNY. (Columbia University has a site explaining the licensing principles of museums and galleries.) And while you're at it, we're curious what you think of this artwork?

Can We Do a Book About the Rolling Stones?

Dear Rich: I am a small publisher with a writing background who wants to release an e-book covering the 50th anniversary of the Rolling Stones. I have asked many experts three questions: who is their favorite Rolling Stone? What is their favorite Rolling Stone song? and What is a memorable experience that they had regarding the Stones and their songs? I plan to publish the findings in a e-book and sell/release it for download. My questions are: (1) Do I have to ask the band's permission to release the book? (2) If the company decides to sell the book, do we have to compensate the Stones? (3) Am I okay to publish this if I dont include any copyrighted logos/materials etc in the publication? The Dear Rich Staff has decided that its favorite member of the Rolling Stones is Keith Richards because we loved his autobiography, he set the standard for all rock and roll guitar playing, and because if we find certain old pictures of him, he kind of reminds us of the way we wanted to look back in the day. (Of course, our second favorite Rolling Stone is Charlie Watts because he is the best dresser and drummer in rock and roll.) Our favorite Rolling Stones song is You've Got the Silver because Keef sings it but if you're looking for tracks that Mick sings, then it would be Wild Horses or Angie. Our most memorable and most depressing Rolling Stones experience was the so-called "Inflatable Penis" tour in 1975. We saw the show at Indiana University Convention Center and the setlist was awesome. But it was the first tour that the Stones used props on stage and we remember thinking at the time -- maybe it was the Hoosier audience, the awful sound mix, or maybe it was the sad use of the props -- that this was the end of rock and roll. And of course, we were correct about that.
Right, you had a question. If you don't use any copyrighted materials owned by the Stones -- lyrics, photographs, etc., --  then you won't need to ask permission or deal with compensation. If you do use some limited excerpts or clips, you may be able to excuse that use under fair use principles. For example,  under U.S copyright law, you can probably get away with thumbnail reproductions of album covers as a fair use. You're probably fine to use Rolling Stones logos and trademarks because your uses are strictly information/editorial and permissible under trademark law. However, we think you are best avoiding the use of of logos (such as the logo reproduced above) on the cover of the book as that may imply endorsement by the Stones.

Can I Sell Sports App That Uses RSS Feed?

Dear Rich: I've already made an app that feeds RSS feeds from SkySports and goal.com. The app informs people on the go about their football team. I'm about to change the app slightly and putting more work into it. I'm thinking about selling it for 1 pound. Would this be copyright infringement because I'm making a profit (or am I just feeding people the infomation from the direct source, that is, skysportsnews.com and goal.com)? Start by considering the two extremes of RSS feeds apps. On one end you have RSS reader apps like Xnews. These apps don't infringe because they are simply providing access to a variety of feeds. On the other end you may have a news app that pulls feeds from a few specific news sites and reproduces the material within the app. This is more likely to be copyright infringement because it is reproducing specific RSS feed content for readers, as well as trademark infringement because it is confusing consumers as to the source of the material. (BTW, we wrote about this issue about six months ago.) Your app seems to be somewhere in between these two extremes (and the fact that you are charging money doesn't affect the determination). The more you move away from the reader model where the user chooses the RSS feed and gets unadulterated content, and the more you hype the name of the company supplying the feed, the more likely you will run into problems. In your case, reproducing content from two specific feeds (whose trademarks are featured) could trigger a cease and desist letter.

What is a Registered Patent?

Dear Rich: The company I requested to review my "pending patent" said I must first have a "registered patent" before they will review it. What is a "registered patent"? You either have a patent or you don't, so we think the term "registered patent" means that the company wants you to have one. If you're patent-pending, you don't have a patent. You've filed the appropriate paperwork but the USPTO has not approved your application. Some inventors mistakenly believe they have a patent after filing a provisional patent application (PPA). The PPA preserves your place in line at the USPTO and it may serve as a deterrent but it's not a patent. You cannot use a PPA to stop others from copying your invention, and it only has value if you file a regular patent application within one year of filing the PPA. Because less than half of patent pendings "matriculate," into patents, a lot of companies are wary of patent pending status.
(BTW, there's a lot of helpful patent business info at Nolo's new patents and business site.)

How Do I Protect My Doll?

Dear Rich: I am the author of a childrens' book about a little girl. Per my requst, my illustrator made a doll that looks exactly like the character in my book. This book is the first in a series, by the way. My question is this: Do we need to obtain a trademark or copyright on the doll? I want to use the doll when I read the book at various places (it is a picture book for children ages 5 through 8). I have tried to research this myself, but it is confusing. Speaking of confusing, we're not sure what to make of the Bitty Baby doll and its accompanying diaper bag. Do other dolls come with their own doll? Is this the right message to send children about overpopulation? Is it the right name for a doll? We guess we'll never know.
Right, you had a question. Yes, you can protect your doll under copyright law. You can file an application electronically or by using the Form CO (PDF). You would register it as a work of the visual arts. Circular 40 explain the rules.
Did the illustrator assign rights to you? According to your question, the illustrator created your doll. That might make the illustrator the copyright owner. If you and the illustrator jointly developed the doll, you may be co-authors. In any case, it's probably in your best interest to get an assignment of copyright from the illustrator. (This Artist's eGuide includes one).
What about trademarks? You can register your doll's name with the USPTO. But you don't get federal rights until you've started selling the doll (although you can reserve rights). If money is tight -- trademark registration costs approximately $300 -- you can wait until sales from the doll justify filing the application.

Manufacturer Wants Invention But Not the Patent

Dear Rich: I have your book, Profit From Your Idea, and I'm in licensing negotiations with a manufacturer. I created an invention that involves snowmobiles and portable cookers and it's currently patent pending in the U.S. and Canada. I proposed a deal whereby the manufacturer would advance me $7,000 most of it for patent prosecution costs, and a 7% royalty. However, the manufacturer responded that they do not see the value in a patent so they don't want to pay the $7000. They seem to want to avoid talking about patents in the contract (perhaps just to avoid the $7000 or perhaps for other reasons). Question 1: Can I legally make a contract without having patent pending (or other forms of intellectual property) to offer them? The advantage of selling them the 'idea' and not only the 'patent' is that we would continue to receive royalties if the patents do not issue. If they agree to this, is this an acceptable approach? I know for a fact that certain inventors do license without any IP (for novelty items for example). On the other hand, your book, and advice from David Pressman seems to argue that some sort of intellectual property must be exchanged for royalties (you can't just sell your 'idea'). Question 2: Let's assume we do license the 'idea' and the manufacturer sells a bunch of units. And let's say our patents do not issue because the idea has already been patented by a third-party. Can that third-party sue us directly for having sold an 'idea' to a manufacturer that we do not own? First of all, thanks a real, real, lot for buying our book. If you saw our recent Nielsen numbers you'd know why we're so grateful. Second, we hope you're being careful out there snowmobiling with burgers and wings frying in the back -- talk about distracted driving.
Right, you had a question. Yes, you can license without a patent. A lot of manufacturers don't want to mess with patents because they may believe that the key to success is getting to market first (and patents take years to obtain). Still, there are some obvious advantages to having a patent, in particular you have a monopoly on the invention and may be able to control derivative versions as well.
How do you describe what you're licensing? In your question you state that the invention is patent pending in the U.S. and Canada but then you ask whether you can license something that's not patent pending. So, we're not sure of the status of things. Either way -- patent pending or not -- is okay. In Chapter 8 of the book, we provide language for licensing a patent pending invention -- "The 'Property' refers to the invention(s) described in U.S. Patent Application No(s). _______, a copy of which is/are attached to this agreement."  Following that we also provide language if the innovation is not patent-pending. In both cases, providing an accurate description of what you're licensing is most important.
Is it legally binding if I have no IP protection? It helps to be able to point to a patent or a trademark registration when licensing but not having a government registration doesn't preclude you from licensing an idea. The idea may involve trade secrets or know-how, or some other product of the mind, and the fact that a licensee is willing to pay for it indicates that it has property value. Ideas are commonly licensed in the toy and entertainment industry.
You're not licensing your patent, you're licensing your rights. If you make the deal and the patent doesn't issue, that shouldn't affect your arrangement unless the agreement specifically states that the license is contingent upon acquiring patent rights. For example, many license agreements set two standards of royalties: one if the patent issues; one if it doesn't. Because the licensee isn't interested in the patent, you shouldn't have language penalizing you if it doesn't get issued.
Yes, you can get sued if you infringe someone else's patent. Unless the manufacturer is willing to indemnify you (very rare), you can be sued for infringement. Usually, it's the other way around. The manufacturer wants you to indemnify them. Please read the section on Warranties and Indemnities in Chapter 12. If you must indemnify, we describe a system based on an incoming royalty fund in the book. See if you can get the licensee to accept that so you won't risk out-of-pocket payments.
P.S. We just redesigned a patent site that may provide some help for you.

Can We Paraphrase Three Paragraphs?

Dear Rich: What is the rule on paraphrasing. I was told that it's okay to paraphrase articles from the web at our site if (1) the original work has been posted for more than a year and (2) only three paragraphs are paraphrased. I can't find anything about this rule on the Internet. That's because there is no such rule. The idea that paraphrasing always excuses infringement is one of the more popular copyright myths. We can't tell you the quantity of paraphrasing that's permissible but here are some cases to guide you:
The caselaw. In a 1974 case, a text book publisher took a popular child psychology book and hired a series of freelance writers each to rewrite the chapters of the book so the result was all paraphrasing. The writers were instructed to maintain the same sequencing of topics and weighting of subject material. A court found such massive copying to be an infringement. Another court later stated, “We recognize that even in the absence of closely similar language, courts have found copyright infringement on the basis of “recognizable paraphrases.” The Second Circuit Court of Appeals stated that infringement occurs when “an alleged infringer borrow[s] virtually an entire work and attempts to avoid liability by doing little more than changing the verbatim language or slight details in the structure.” But wait, there's more: Another 1970 case held that extensive paraphrasing amounts to infringement including the rewording of legal agreements, and in 1972, a court would not excuse extensive paraphrasing when the defendant rewrote a book about guitar playing.
Bottom line dept.  Courts examine paraphrasing on a case by case basis. Don't assume that changing the words automatically absolves you from liability.

Family Named Business Can't Always Use Family Name

Dear Rich: Our family has had a restaurant business since 2003 and recently we got a letter from a large chain asking us to change it because their lawyers say it is too similar to the chain's trademark. I don't know how they found out about us. We're a pretty small operation. Can they really make us change our restaurant's name? We're sorry to report that -- depending on the circumstances -- you may have to change your name. We've written an article on the subject of family names as trademarks so check that out, first. Assuming the chain has been using the name longer than you have, the wisest course is for you to hire a business lawyer to determine your response.
P.S. Speaking of restaurants, here's an adventurous desert we recently ordered at our local seafood shack -- Chocolate ganache wrapped in filo topped off with peanut butter sauce and hot fudge. It was great!

Wants to Quote Movie Dialogue in Novel

Dear Rich: I don't see anything in your Getting Permission book on getting permission to quote dialog from films. I assume that the process is similar to getting permission to quote song lyrics, but it would be better if you covered this in detail. I want to quote with attribution some movie dialog in a novel I am writing. Any suggestions? Speaking of film dialogue, we were surprised recently when reading the French classic Pere Goriot to find a line about someone "making him an offer that he cannot refuse." Did Balzac travel to the 20th Century, watch the Godfather, return to the past and copy the movie dialogue for his novel? We guess we'll never know.
Right, you had a question. The rules for using film dialogue in a novel are the same as for all text uses (explained in Chapter 2 of the book). As you're probably aware, there is no fixed amount of words that you can use without permission, although some uses are so minimal as to be considered de minimis (scroll down). The difference with using film dialogue is that it's often difficult to figure who owns the rights and even harder to get permission for the use.
Why is it difficult to get permission for movie dialogue? Generally the studio (or a producer) owns all rights to the movie including the dialogue. But in some cases, screenwriters may retain rights. In other cases, if the movie were based upon a book, the author may retain certain rights. That's the challenge when using one layer from a multi-layered work -- determining who has the right to grant permission. Even if a studio does own the rights to the dialogue, you still have the practical problem of finding the person authorized to grant permission (and convincing that person not to hang up on you).
What's a novelist to do? If you're publishing the book yourself, you're probably less at risk because you won't be indemnifying against infringement. Publishers get uptight about stuff like that and insist on some security in the form of warranties and indemnity. On the other hand, a publisher may be able to assist you with getting rights and permissions from a studio. If you're on your own and you're still concerned about getting chased, consider whether you can make a realistic fair use claim. That is, can you demonstrate that your use of the dialog is transformative -- for example, Woody Allen's use of dialogue from Casablanca in Play It Again, Sam, was transformative (though Allen likely acquired permission for that and the film clips).
Speaking of great movie dialogue ... we're partial to Things Change (Don Ameche's swan song). It's got dialogue -- written by David Mamet and Shel Silverstein -- with some serious staying power.

Is My Publisher a Piracy-Denier?

Dear Rich: I am a writer and my publisher recently sent out an email telling authors not to worry about illegal downloads. It makes me mad to see how easy it is to obtain free copies of my book. How do I tell whether piracy affects book sales? Gee, this is a tough one to answer for a few reasons: (1) Our bodies are still clogged with post-Thanksgiving metabolism-slowing leftovers. (2) Our books have been pirated so we may be too close to the issue to provide a balanced response. (3) When talking about piracy we're never sure which statistics to trust. (4) More importantly, we're not sure whether the statistics even exist currently to answer your question. In general, we don't think anyone really knows the answer, but here are some things to consider:
Using the music industry as a paradigm. One theory about illegal downloads is that the people who download them would not have bought the product in the first place. In other words, no sales are lost. Using that line of thinking, the 95% of international music fans who downloaded an illegal copy of the latest Katy Perry album would never have purchased it. Hmm. Even if that number is inflated by the music industry, it's hard to believe all these Katy Perry fans wouldn't pay for her recordings. Even a small conversion rate would double Katy's sales. Of course, book readers and music lovers are different types of consumers (like they say, we don't need to carry a copy of every book we like in our pocket) so analogizing to the music business may not be proper. But it's also possible that the book industry has not yet reached the same digital precipice (from which the music biz has already fallen).
Does DRM have an effect?  Digital rights management (DRMs) built into all eBook readers probably doesn't have too much effect on piracy (and nor will SOPA, if passed). The train has left the station, so to speak.
What about surging eBook sales? It's true that eBook sales are rising dramatically. But that's a measurement of the popularity of iPad and Kindles and only partially counterbalances the disappearing physical book (and physical bookstores). As digital devices become the choice du jour for readers, piracy will probably have an increasing impact on eBooks (just as the popularity of MP3 players triggered the end for the music biz). More importantly, even if not directly, unauthorized digital downloads will be one of the indirect forces causing legitimate revenue to diminish (see below). 
Where is the book industry headed? The content business is heading away not just from physical products, but from downloads too (both legal and illegal). The new model is to replace individual purchases with subscription/streaming services as exemplified by Spotify, Netflix, and Rdio. Of course, there will still be print books, but for the most part, consumers won't possess individual units of content; they will subscribe to a service that provides a content library. No doubt Amazon and Google will eventually drag us to library subscription models for books (though there are still piracy problems with that as well). But in any case, we may be headed for a world where all downloads, not just illegal downloads are irrelevant when offered a fulltime streaming/subscription model. 
Check's in the mail dept. Alas, all of this digital transition doesn't bode well for author revenues (musicians, take a look at a Spotify accounting statement to see the diminishing profit margin). And that's why, as authors, we admire piracy-deniers like your publisher. We may not know for sure what those diminishing royalty checks mean, but denying that the end is coming allows us to still have a nice day!

Can Photographer Control Photos From Fashion Shoot?


Dear Sir/Madam: I am a freelance photographer and I am also working on an upcoming online fashion magazine. Recently I organized a photo shoot with a few models I have founded via Internet and a designer who agreed for the models to wear his clothes for the photo shoot purposes. The designer refurbishes and sells branded clothes. Everyone agreed to the photo shoot on these terms:
  • Everyone gets the photos for their own usage 
  • I will use the pictures however I want, and also the ones I choose will be featured in the online magazine 
  • No fees charged on anyone including models, designer and myself 
It's a verbal agreement with everyone and not written. It may not have any value in the eyes of law. Now however the designer (the person who allowed us to use his clothes for the shoot) is giving me trouble setting me deadlines and choosing the pictures I can use for the magazine or anywhere else. I want to use the photos that I want to use, the way I want to use them and whenever I want to. He claims it would be illegal if I used the photos anywhere without his permission and supervision. He hasn't got any photos from me yet so he can't use any either for his own purposes. I would like to know whether I am allowed to use the photos that I took that day, the way I want to and without any restrictions. Or would I have to at least mention his name or his shop's name? We haven’t signed any copyright releases etc. Also would I need to get the models release if I want to upload the pictures? I would like to add that the photos will be used for editorial purposes only and non-commercial. We're back with the "Dear Sir/Madam" that starts your letter. What prompted your uncertainty as to gender? Can Rich be used as a woman's name? There is a female equivalent for Richard -- Richelle (and we were excited to see that a Richard and a Richelle recently married). But we're not clear whether a woman writing this column would be addressed as Dear Richelle, or Dear Rich (or perhaps the more endearing Dear Richie). As a further digression, our research unearthed some surprising data regarding the number of serial killers named Richard.*
Right, you had a question. Unless there is a written document evidencing copyright transfer, you, as photographer own copyright in the photos. You control the reproduction and distribution and you're free to choose and reproduce the photos you want for your magazine. If the verbal agreement is enforceable -- that depends whether there is sufficient evidence to prove the terms and conditions -- you would have to abide by those terms, as well. Even if the verbal agreement is valid, it doesn't preclude you from doing what you want -- choosing the photos you wish to use in the magazine. (And you would be obligated to provide copies of the photos to the other parties.)
Do you need to mention the designer? We're not sure why you have to mention the designer or the designer's store, unless you're contractually bound to do so. The designer has no copyright in clothing design unless he's stitched in some unique artwork--for example, he's added intricate needlepoints. In any case, it might be a nice professional touch to credit the designer as fashion readers expect that information.
What about model releases? Releases are needed to head off two types of problems: invasion of privacy (you may be invading the model's privacy, for example, by showing her partially nude); or violation of the right of publicity (you're using the model's image to sell something). Typically, editorial non-commercial uses wouldn't trigger the right of publicity but with Google AdSense and similar Internet schemes, it's difficult these days to tell sometimes whether an image is being used for commercial exploitation.

*Serial killers named Richard: Richard Angelo - The Angel of Death, Richard Biegenwald - The Thrill Killer, Richard Chase - The Vampire of Sacramento, Richard Cottingham - The Torso Killer, Richard Macek - The Mad Biter, Richard Ramirez - The Night Stalker (and speaking of notorious killers, there's also Richard Loeb (of Leopold and Loeb infamy).

What is SOPA and Should I Care?


Dear Rich: The web's buzzin about SOPA. Are you going to do a post about it? What's your opinion? The Stop Online Piracy Act (SOPA) comprises two distinct pieces of legislation (one awaiting a vote in the House and the other already passed in the Senate) that will need to be conformed. The legislation would enable the Department of Justice (or private parties) to "blockade" pirate sites outside U.S. jurisdiction by cutting them off from search engine results and AdSense revenue, among other things. The legislation has triggered a battle between content providers -- frustrated that they can't shut down rogue pirate movie, software, ebook, and music sites  outside U.S. jurisdiction -- and content aggregators who are concerned that the broad language in the legislation would remove the safe harbors of the DMCA and make non-pirate sites (such as Yahoo, Flickr and Scribd) liable for infringement. Opponents are also concerned that SOPA will diminish investment, cause revenue losses, create unnecessary legal expenses, and send jobs overseas. (Similar arguments were made in the battle over "patent reform"). As with the DMCA, those who pursue infringers based on misrepresentations are liable for damages and attorney fees.
Will it pass? Surprisingly, for a Congress that can't seem to get traction on crucial national issues, the SOPA legislation has remarkable cross-party support and is expected to pass the House. The president is reportedly in favor of the legislation while vice-president Biden appears to be opposed.  Among those legislators lined up against SOPA are Darrell Issa, Ron Paul, and Nancy Pelosi. (Copyright battles make for strange bedfellows -- remember when Justices Blackmun, Marshall, Powell, and Rehnquist united in their Betamax dissent?)
Cutting off AdSense. Do you wonder why SOPA includes a provision cutting off ad revenue from pirate sites? That's because ad revenue is often the only source of income for the folks who post illegal content. Think about it. How else can they earn money if they're giving away stuff for free?
What's our opinion? Although we are concerned about government injustice and intellectual property (check out this example of stifling innovation), our mission at Dear Rich HQ is to provide practical information that helps readers solve problems. So, we discourage the staff from presenting opinions. Other reasons why we don't have an opinion include:
  • it takes time to come up with a logical well-thought out opinion and we're already pretty busy. 
  • in terms of human evolution, we're convinced our opinion doesn't matter
  • also, we're tired of everybody else's opinions (like they say, if I wanted your opinion, I'd give it you.)
What do we have an opinion about? We think Terrence Malick's Tree of Life would have been better without all that dinosaur stuff (although others differ).

    Can We Sell Irish Street Art

    Dear Rich: The attached photo was taken in Dublin Ireland. Someone had added a little graffiti and the overall look was pretty cool so we took some photos. It was out on the street, no trespassing involved here. I’m wondering if we would be in the clear to publish a series of these photos to sell as open edition print reproductions? We agree; this is some pretty cool street art. As we've discussed before, art (unlike architecture) that's publicly viewable from the street is protected by the same copyright rules as art that is hanging within a museum. The only exception is that there might be a tendency for judges to be more liberal applying fair use rules. For example, reproduction of this image as one element in a Dublin street scene would probably be fine. But featuring the photo and selling individual prints would likely violate the artist's copyright (we assume the graffiti is not by the same artist and in any case, it is not protectible). We're not experts on Irish copyright law but from what we've read, it seems as if the same basic rules apply in Ireland as in the U.S. (We're also not sure whether the copyright holder is Irish (as Dublin attracts foreign street artists). But in any case, most countries including the U.S. are treaty partners meaning that foreign copyright holders can claim certain rights in the U.S. For all these reasons, resale of this artwork could make you an easy target for an infringement claim.



    Examiner Objects to Facebook Game Trademark

    Dear Rich: I need to register a trademark, which is the title of a videogame that runs on the Facebook platform. The filing was made under IC041 (Entertainment services, namely, providing on-line computer games), but when I sent over a specimen (screenshots of the game featuring the title) I was told that such a game does not constitute a "service", but rather it constitutes "goods" (video game software), thus I should better restart the filing process under IC009 (Computer game software for use on mobile and cellular phones). Am I facing a hardball attorney or are the USPTO guys right and I should restart the process? We agree with the examiner. You would use Class 009 for registering the name for a game. (You would use 041 if you were registering a website that provides the game-related services, or if you were registering the name of the company that makes the game.) The best way to avoid problems in the future is to look up similar goods and see what classes were used for those marks (or check out our book for app developers). Use the basic Trademark Search and type in the name of a video game to see its classes. For example, scroll down to see the classes sought by the Angry Birds folks.
    More places to search. To identify the class for your goods, you can also search the USPTO’s Acceptable Identification of Goods and Services Manual. From the Choose Field drop-down list, pick Class, and then type in a description – for example “video game”—into the Enter Search Terms field. The search results will tell you which class is recommended. Another way to figure out which class your product falls into is to check the Trademark Manual of Examining Procedure (TMEP).

    When is Abandoned Trademark Abandoned?

    Dear Rich: I would like to use a trademark that was first used 2/2007 and has been deemed 'abandoned' since 8/2008. On your blog you note that the trademark is deemed abandoned if the owner does not use it for an extended period of time with the intent not to resume use. How can I find out if the owner intends to use it? What did the owner do/not do that caused the trademark to be deemed 'abandoned'? Thank you for your help! And thank you for triggering an ancient memory of watching "Seduced and Abandoned" in the local art theater with my dad. What a great movie -- even though it was a comedy, it was kind of scary, too.
    Right, you had a question. There are three types of trademark abandonment:
    • an abandoned trademark -- this refers to the loss of trademark rights due to nonuse and it occurs when there is sufficient evidence that the owner intends to discontinue use of the mark. Under the Lanham Act, a mark registered with the U.S. Patent and Trademark Office is presumed abandoned if it is not used for a continuous period of three years or more.
    • an abandoned trademark application -- this refers to an application that is ditched during the application process.  We're guessing that's what your question is referring to because it fits best with your timeline. If you're wondering why a trademark application has been abandoned, you can do the detective work and find the reasons by checking the TARR status of the mark, or if necessary by reading through the documents you can access for free via the USPTO's TDR (Trademark Document Retrieval). This is accomplished by clicking around and reading the PDFs associated with the applicant's file. By reviewing the documents in the application file you can learn whether the applicant just ran out of steam at the USPTO or whether the  USPTO examiner had a good argument as to why the mark shouldn't be registered. Keep in mind that if an application was abandoned because an examiner objected to registration that could be a strong indicator that you will run into problems with the same mark.
    • an abandoned trademark registration -- this refers to a trademark registration that is canceled, usually because the owner failed to follow certain formalities such as a renewal. Again, you can find the reasons by searching trademark records. The most common reason is that the owner didn't file a statement of continued use, resulting in cancellation. Often it's okay to step in and begin a similar use but you should always check the marketplace to confirm that the previous owner is not still claiming rights even without the registration.
    As for determining whether a company abandoned its use of a trademark, you need to do old-fashioned research. Check retail stores, search online, or -- as we used to do back in the day -- call the company and asking whether you can still buy the product or acquire the service.

    How Long Can Ex-Employer Chase Ex-Employee?

    Dear Rich: I stopped working for a small California tech company in 2008 and now I'm working for a competitor. My ex-employer recently found out about my job and is threatening to sue because he says I still have trade secrets and that I will disclose them at my new job. Can he still bring a lawsuit after all this time. Isn't there a time limit? There is a time limit for bringing trade secret claims in California. It's three years from the date the trade secret theft was discovered (or should have been discovered with reasonable diligence). So, depending on when you began working and other factors, your ex-employer can probably still bring the suit. That time limit also may depend on whether the ex-employer and you had a written agreement (which may establish its own time limits on secrecy).
    Time limits may not be the main issue. According to your letter, your ex-employer is concerned about a prospective disclosure of secrets, not an actual disclosure. If that's the case, that's probably not going to fly in a California court. California law doesn't support claims based on "inevitable disclosures" by former employees (although an ex-employer may be able to get an injunction for a "threatened disclosure"). Here's more on California trade secret law.

    Can We Upcycle Band T-Shirts?

    Dear Rich: In an online selling venue, we have a thread going with a discussion about upcycling a t-shirt with touring band theme designs on them. One person wants to use these copyrighted shirts to "upcycle" them into another piece of clothing or a hand bag, that they would then offer for sale. Some of us say "no" because it's still a copyrighted image on the shirt. You bought the shirt, not the image. They say since they own the shirt, they can do anything that they want with it. They say that the shirt maker bought the right to use the image, therefore, the copyright owner has already been paid. We had to look up the definition of upcycling and as far as we can tell, it's recycling but with a bigger profit margin. Like, lately we've been capturing the cold water in our shower as the water warms up. If we just dump that water on to our plants, we're recycling, but if we flavored that water, froze it, and sold it as Fair Trade Popsicles, we would be upcycling. (We think lime flavored would be best as it would have a green color.)
    Right, you had a question. You should be able to re-use band touring t-shirts in clothing or in a handbag without asking for permission. Copyright law permits the purchaser of a copyrighted work to resell, destroy, or do whatever they want to that work, as long as they don't step on any of the copyright owner's exclusive rights. This principle is known as the first sale doctrine, and that's why people can sell used books, movies, and music on eBay and Amazon. The term "first sale doctrine" comes from the fact that the copyright owner maintains control over a specific copy only until it is first sold. (One exception: If it's a limited edition artwork or fine art work -- for example, signed and numbered photographs created in limited editions of 200 or fewer copies -- you can't destroy it.)
    But it's not so simple. The rules are a little different once you start to disassemble or reconstruct the copyrighted object. In one case, for example, it was okay for a company to make baby bedding from a copyright and trademark protected fabric. But there is a conflicting line of cases that makes things a little confusing. In one case, a company purchased a book of prints by the painter Patrick Nagel and cut out the individual images in the book and mounted them in frames for resale. A court of appeals in California held that this practice was an infringement and was not permitted under the first sale doctrine. (Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988).) (A similar result was reached in Greenwich Workshop Inc. v. Timber Creations, Inc., 932 F.Supp. 1210 (C.D. Cal. 1996).) In a different case, a company purchased note cards, mounted them on tiles, and resold them. A federal court in Illinois determined that this practice was okay. (Lee v. Deck the Walls, Inc., 925 F. Supp. 576 (N.D. Ill. 1996.) (The same result occurred in C.M. Paula Co. v. Logan, 355 F. Supp. 189 (D.C. Texas 1973).) So, under these rulings, a person cannot rip individual images from an art book and resell them in California, but a person can mount individual note cards and resell those in Illinois and Texas. We don't think these rules will affect your activities unless you were to cut up a shirt and take two or more separate images and repurpose them on multiple products. But reusing a single shirt to create a single item of clothing or a handbag should be fine.
    Beyond copyright. There are some other rules for repurposed items that contain trademarks or infringe on a band's right of publicity. Most likely these won't be an issue but to be on the safe side, you can avoid any impression that the touring band endorses the shirt by advertising the items as Handbags Made from Upcycled Rolling Stones T-Shirts instead of saying  Rolling Stones Handbags.

    Can We Pilfer Celebrity Photos From IMDB?

    Marlon Brando and James Baldwin
    at 1963 March on Washington
    Dear Rich: I wanted to post some photos for a celebrity article at my website. I’ve totally forgotten rules regarding photos. Can I pilfer IMDB and give an attribute to them or do I actually need their permission? Are there any secret public domain photos for celebs you know about? The copyright in celebrity photos is owned by the photographer (or by the agency to whom the photographer has transferred rights). We doubt whether the IMDB owns rights in all the photos it posts. Most likely, it's acquired those rights from the copyright holders. Often large celebrity-styled sites have ongoing 'subscription' deals with the companies that own photo rights such as Getty Images, PR Photos, PictureLux, and Shutterstock.
    Operating without clearance. If you work for a website company, you're best off not jeopardizing your job by using unauthorized photos. The price you'll have to pay -- time, threats, lawsuits and payments -- if you're caught will far outweigh the licensing costs. If you're just posting a photo occasionally to your personal blog, you're less likely to get hassled but beware that photo agencies employ various means of tracking digital photo use including digital watermarks and embedded metadata.
    Right of publicity. The rules we provide here are for websites where you are using the celebrity photo as a means of illustrating a story about the celebrity -- for example, you're discussing the funny side of Mike Tyson. If you are using the celebrity photo to imply endorsement of your site or to sell a product or service, you'll need the celebrity's permission as well.
    Public domain photos. There are some public domain photos of celebrities. Try sites such as Wikimedia and read and observe the terms of the licenses. We're not so sure about so-called public domain photos at other sites -- that is, whether the photos are actually in the public domain. We typed in "public domain celebrity photos" and found mixed results (including pictures of Dwight Eisenhower and Britney Spears -- we don't want to think about the potential mash-up!). Of course photos taken by government employees -- for example, Elvis shaking hands with President Nixon (soon to be a movie) are in the PD. We think that's the case with our photo of Marlon Brando and James Baldwin (above) -- perhaps taken by an FBI agent. (And here's a related video made around the same time).