Protecting Shoe Designs

Dear Rich: I recently did some creative painting on high heel shoes and got a great response.  Suppose I create 12 individual painted designs and want to see if I get orders.  In order to preserve my designs what do I need to do?
If you're applying surface ornamentation to a shoe, (imagery like this, that is considered separable from the footwear) your best protection is probably copyright law because it's automatic and because you can stop others from reproducing the image on anything, not just shoes. You should register the work if you're concerned about it being ripped off because copyright registration provides some advantages in a lawsuit. You can register all your designs as a group but if one of your designs is more popular than the others, you should probably register it separately. You can find help online, and if you need more assistance, check out our book, The Craft Artists' Legal Guide.
Protecting the shoe's design. If you want to stop the specific use of your image in connection with shoes, (or for some reason you want to protect the design of the shoe itself -- the shape, proportions and "sculptural" elements), you might consider filing a design patent. Design patents protect shape, design and ornamentation for useful objects.  Companies with large design patent portfolios, such as Nike, successfully use design patents to stop others from making similar shoe designs. We discussed the differences between copyright and design patents in a recent post. The big difference is that design patents are more expensive and take longer to acquire.
PS Good news for those who can't find what they want at Zappos: design your own shoes.

No Payment for Assignment

Dear Rich: I assigned my copyright for a software app and was supposed to receive half the money up front and the other half within six weeks.  It's been four months and all I get from the company are promises. Can I revoke the assignment and assign it somewhere else? That depends on the agreement, as well as the state law that is used to interpret it. We think you're in a tough spot because revoking assignments requires dealing with issues like those raised in this recent Dear Rich response.
As a General Rule Dept. Signing an assignment for the “promise” of future payments always involves a risk. We used to have a client whose golden rules were, "Get as much as you can before signing the deal," and "Don't give any money back." One reason to get the money upfront is that if the assignee (the person who owes you the money) fails to pay you, you may be trapped in dispute resolution, fighting to get your copyright back. If the assignee insists on a series of payments, there are several solutions, such as establishing an escrow account, transferring partial assignments per payment, or setting up a license agreement that allows for ownership transfer after the final payment. This is a situation where you should consider contacting an attorney (and we hope your assignment agreement has an attorney fees provision).

Can I File Provisional in Foreign Language?

Can I File Provisional in Foreign Language? (click to enlarge)

Can We Use Sam's Club Photo in Manual?

Dear Rich: I have a photo of a bunch of electrical conduit inside a main electrical room at a Sam’s Club. The store manager gave the person who took the photo verbal permission to use it for educational purposes. There is no way to tell that the photo was taken inside a Sam’s Club. It’s just a bunch of nicely installed electrical conduit inside a small room. I want to use the photo in some electrician training curriculum my organization is developing, and we want to sell the curriculum to a client. Your book talks about using photos people take of trademarks but not about photos of locations that can’t really be associated with a specific trademark holder or location. If we use the photo in our curriculum are we violating copyright law? The Dear Rich Staff is wondering why Sam's Club? Is there something about the store's wiring that makes it particularly photogenic? (Alas, the nearest Sam's Club is 47.1 miles away, so we're unlikely to find out.)
Right you had a question. Yes, you are free to use the photo of the conduits. Rules about trademarks in photos only apply if a company's trademark or trade dress or some other visual identifier is visible in the photo. Even if a trademark is visible in the photo, you can still use it without permission for informational purposes such as your instructional manual. (You can even caption it as originating from Sam's Club.) You will of course need the permission of the photographer (unless the photographer is your employee or has signed a work made for hire agreement). There's also the (very) outside possibility that the electrical wiring contains a trade secret -- that is, the manner in which Sam's Club wires its buildings provides an advantage over competitors. Even if that's the case, it should not be a problem for you as the store manager has permitted the photograph; it wasn't done surreptitiously.

Photo Credits: Can You Remove Them?

no shoes, no shirt;
no fair use defense

Dear Rich: Please discuss Murphy v. Millennium Radio Group, a recent case that deals with nudity, defamation and copyright law. Okay, here goes: A photographer's copyrighted picture of two nude radio "shock jocks" was published in the New Jersey Monthly. The radio station that employed the men scanned and posted the photo online (after removing the photo credit that ran alongside the photo -- known in the trade as a "gutter credit"). The station then encouraged listeners to download the photo, modify it and resubmit the photos to the station for posting. When the photographer's lawyer complained to the station, the jocks did what is expected from men who pose nude to promote radio shows -- they insulted the photographer, advised others not to do business with him, and made crude comments about his sexuality. The photographer sued for defamation, copyright infringement, and for violation of the Digital Millennium Copyright Act (DMCA). The district court ruled in a summary judgment against the photographer on all counts.
The Court of Appeals Decision. On appeal, the Third Circuit reversed. More discovery was needed to decide the defamation claims (the tapes of the show had been destroyed). The Third Circuit also blew off any fair use defense. Posting the original photo and encouraging listener modifications was a purely commercial use and carried no additional transformative message. For those keeping score, all four fair use factors weighed against the station.
Removal of the credit. The most interesting claim was the argument that the DMCA prohibited the removal of copyright management information (CMI), which includes digital identifying information such as the name of the author. The Third Circuit ruled that the "gutter credit" qualified as CMI and cutting it off the photo violated the DMCA.
Takeaway Dept. In this case, someone physically cut off the photo credit, scanned the photo and posted the digital result, something not many people anticipated would trigger a DMCA claim. Does this mean that you must always include a photo credit when you reproduce a photo? Not necessarily; it just means you cannot remove an existing credit. This issue may become more confusing if the credit is not adjacent on the printed page, perhaps something that other cases will decide. For now, gutter credits qualify as CMI, at least in the Third Circuit.

Model Releases for Street Festival

Participants in San Francisco's
Bay to Breakers Race/Party

Dear Rich: I have a question about model releases for a large, public, 2-day street festival. From what I can determine, I would not need a model release from the attendees that I photograph (there will be LOTS of them) unless I sell them, even if they are recognizable and the main subject of the photo. Is this correct? If the photos were to be sold or used commercially, would a release be required? If a release is necessary (even if it is just to cover our butts), to ease the burden of obtaining hundreds of model releases each day (I would not have time to take pictures!!), would it be legally binding to have a sign at the entrance to the festival (or printed on the tickets) stating something like: "Photographs will be taken during this festival. Selected photographs could be used commercially and in festival promotions. If you do not wish to have your photo taken, please inform the photographer." Yea! It's summer and the time for street fairs. We remember being in bands and playing at certain street fairs in San Francisco where photography would have been a problem because of the lack of a dress code (unless wardrobe malfunction counts as a dress code).
Right, you had a question(s). Photographers can reproduce and sell copies of photos of people in publicly viewable situations like street fairs. Newspapers and websites can reproduce those images if the pictures are used for "informational" purposes. But an advertiser can't use the same images of people to sell products or services if the person in the ad is clearly recognizable. That's because the advertising use implies that the person endorses or is somehow associated with the product.
Can you use a blanket release? Posting a sign may help your claim and it could be sufficient to use the photos to promote the street fair. But it probably doesn't meet the standards of a model release contract required for most commercial advertising uses. That's because the street fair participant doesn't really have an opportunity to assent to or to reject the release (something that is much easier to do if people have to pay for the tickets). Your present opt-out is for the participant to tell the photographer, 'No.'  But what if the participant isn't paying attention when the photo is taken and doesn't notice the photographer? Our suggestion is that if you take a photo and feel certain it would make for a good commercial use, use a short business card-sized release. (Here's some detailed information by the Dear Rich Staff on when and how to use model releases, and here's more on the right of publicity.)

Can I Reproduce Stock Certificates in My Book?

Can I Reproduce Stock Certificates?