Can I Use Public Domain Films That Contain Copyrighted Music?

Dear Rich: I have a sizable film collection of 16mm music films (soundies) from the 1940’s that I would like to assemble into a program for online distribution. All the films fell into the public domain but many of the songs are still under copyright. You can see all kinds of Soundies on YouTube and the Internet Archive whose music is still under copyright and they don’t seem to be bothered by the copyright owners. Should I play it safe and request permissions from the owners of the films I want to use? Or, has there been some recent court ruling regarding the status of copyrighted music in public domain films I haven’t heard about? No, there haven't been any recent rulings and we wish we could provide a clear course of action. But as public domain expert and author Stephen Fishman writes, “In most cases, if a film was not renewed neither was its music. No court has ever decided the question of whether, in this event, the music is in the public domain along with the rest of the film.” As evidence of the confusion, Fishman cites two examples: a situation involving the 1961 public domain film "One-Eyed Jacks" which was not renewed but the film's score was timely renewed in 1989; and the elimination of four songs by the distributors of a DVD version of the public domain film “McLintock!” The songs were removed to avoid paying clearance charges of 48 cents per unit. It is possible that posters on You Tube and at Internet Archives offer these films with the music (and you may be able to do the same thing), but the more popular and/or lucrative your venture becomes, the more likely you will hear from a music publisher.

Infringement of Choreography Copyright?

Dear Rich: I choreographed a show for a producer NOT for hire. Now she is changing my choreography over my objections. Does she have this right? We have done the show 12 years but now she wants changes which, in my opinion, are aesthetically and structurally wrong. I am now waiting for my copyright to be approved by the Library of Congress -- included a DVD of the show. She also hired someone else to 'set' the work without a fee to me. Assuming (1) you are the sole "author" of the choreography, and (2) it meets copyright standards, you would be the copyright owner and would have the right to prevent others from making changes (creating derivative works). Your current arrangement? If there was any paperwork twelve years ago, now's the time to check it. We assume you have granted either an explicit or implied license to use your choreography. If a new version is being created, it's likely you will need to negotiate a new license.
Co-authors. If someone else made material contributions -- coauthored the choreography -- then that coauthor could modify the work without your permission as long as you are paid for a proportional share of the revenue. By the way, the protection for choreography copyright extends beyond the performance on stage; it includes other media -- for example, a series of still photos of the dance pattern. There is very little precedent for choreography copyrights and if you are considering pursuing the producer, we'd suggest you consult with an attorney.

Charity Seeks Clarity: New Lyrics for Old Songs

Dear Rich: I am seeking clarity about a non-profit educational project that includes a sing-along supplement. I have written new lyrics about money and charitable giving for a number of existing song melodies--most of whose original lyrics do not reference either money or giving. (1) Does this fall into the categories of fair use and/or transformative work? (2) Is simple publication of my new lyrics with "sing to the tune of [name of song]" likely to be problematic? 3) Should I be copyrighting my own new lyrics, either separately or as part of the printed publication? 4) How would you suggest proceeding? Assuming these are not parodies or "rewrites" of the lyrics, you're very unlikely to run into obstacles. Performing, recording the songs, or including the sheet music could be a problem but if you're not doing any of that, and you're simply referencing the songs as a source for the melody, we doubt any music publisher will bother writing a letter of complaint. We also doubt whether a fair use analysis applies because what you're doing is not likely to be an infringement.
Should you register? That's up to you. You get copyright automatically without registration and probably only need it if you're expecting to sue someone.

Wants to Sell Kiosk Using Apple Computer

Dear Rich: Hi, I'm building a kiosk system that runs on an Apple computer. The main component in the kiosk system, at least as we intend it to be, is the software. We would simply like to use an Apple computer to run the software on. The computer will most-likely be housed inside the kiosk enclosure and not visible to the user. Would it be legal to sell such a system?Yes, assuming you've legitimately purchased the underlying systems, you can resell them under both patent law (under a principle known as patent exhaustion) and copyright law (under the first sale doctrine):

• Patent exhaustion. Once a patent owner sells a product, the patent owner cannot seek further patent payments for that particular product.
• First sale. You can also resell copies of works protected under copyright law. However, this rule may be "over-ridden" in some states where courts have held that software isn't sold; it's licensed and can only be 'resold' under the terms of an end-user license agreement.

Trademark law should not be an issue as long as you don't imply that Apple is affiliated with, supports, or endorses your endeavor.

Wants to Sell "Wheel of Time" Crocheted Shawl

Dear Rich, My daughter has a talent for taking a description of an item in a book she likes and creating an original article of knitting/crocheting. For example, in the “Wheel of Time” book series, there is are descriptions of the Flame of Tar Valon and Aes Sedai shawls. She has created crocheted articles and an pattern for the Flame of Tar Valon and desires to sell them online. Further she desires to make and sell her own designs of Aes Sedai shawls. What are the legal hoops she needs to jump through, if any, to avoid getting sued? We think your daughter will be fine as long as she steers clear of any advertising that implies the Wheel of Time folks support or endorse her endeavor. One way is to label her work as "Inspired By Wheel of Time" as described in a recent post. Of course, the greater your daughter's success, the more likely she will be scrutinized by the WOT owners.
Who are the WOT owners? Your daughter would want to avoid upsetting the Bandersnatch Group (who appears to be the official licensor of rights) and which has a variety of live applications and registrations for Wheel of Time at the trademark office.

Can We Post Pictures of Products?

Dear Rich: I am starting an online company to provide a service/outlet for people in their communities to sell or give away their unused household items. I have taken a collage style photograph of used items that I own and I plan to post that image as a banner on my website (and adding a funny comments to go along with selected items -- for example, a Darth Vader Mask; "May the force take it away.") Someone said that I could be violating copyrights of the items in my image. We think "Someone" is wrong. Section 113(c) of the copyright law permits the reproduction of product photographs if they are "in connection with advertisements or commentaries related to the distribution or display of such articles, or in connection with news reports."
PS Dept. Speaking of getting rid of stuff, we just finished reading this amazing book about our throwaway culture.

Can Mechanical Violin Play Billie Jean?

Dear Rich: I'm making a short documentary about a guy who invented a machine that plays a real life violin. It's a kinetic sculpture and it can play anything that you can send to a midi file. I want to make the film appealing to all generations and I was hoping I could have the violin play Billie Jean or Livin' on a Prayer. The kinetic sculpture can only play one note at a time. I plan on selling the film to TV or news websites. My questions: 1. Would having the violin play a short (10 second) section of the melody be considered copyright infringement? 2. What about having the violin play different parts of a song (bass, harmony, melody) and editing them together to make the song sound more full. Would that also violate copyright? I ask because the film could be seen as educational because the inventor explains some of the engineering that it took to build the kinetic sculpture. I also wonder if this is falls under the "transformative" clause. We're fans of mechanical music and used to love listening to it at the Museum Mechanique until it moved from its "cramped, noisy, damp and dingy" Cliff House basement location to Fisherman's Wharf. (BTW, the compulsory music license owes its existence to mechanical music.)

Right, you had a question. Your use of Billie Jean or Livin' on a Prayer by a mechanical violin, is likely to be considered a fair use because you are using such a short segment (10 seconds). Here are other examples of music fair use cases. We're not sure your use is transformative. Are you commenting on, or offering new insight into the songs? If you are, that would help your argument. But we must we reiterate our mantra - fair use is a defense and is a matter ultimately determined by the courts. Also, it should not make much difference whether you use just the melody or the full arrangement. 

Can I Use Provisional Patent Drawings in Regular Patent Application

Dear Rich: I have submitted a provisional patent application with eight drawings using Inkscape software. Five drawings show four embodiments (uses for my invention). The drawings are good quality, but are not quite up to utility patent standards. Would I need to re-draw all of them and submit when I file for a regular utility patent, or could I reduce the number of drawings and rely on the previously submitted provisional patent drawings as evidence should someone infringe on one or more of the embodiments? If your drawings are not up to the USPTO's formal requirements -- for example, they have blurred lines -- you will receive a notice stating that your application will not be examined until you file replacement drawings. It is only after your drawings meet formal standards, that your file will be sent to an appropriate examining division. So, filing with informal drawings will delay patent examination. (Note: It's possible for a lay person to create suitable patent drawings -- check How to Make Patent Drawings for information on doing your own). In general, most applicants pay for the services of a professional draftsperson and you can find such services using an Internet search engine (expect to pay $100 or more per drawing).
Embodiments?  It is likely in your best interest to include as many embodiments as possible in your regular patent application (keeping in mind that you cannot rely on your provisional application's date, if you have modified what you are claiming in the regular application). According to Patent It Yourself author,  David Pressman, the more ramifications and embodiments you can think of, the broader your patent claims will be interpreted, and the more you’ll be able to block others from obtaining patents either on devices similar to your invention or on improvements to it. Also, you may have something to fall back on if your main or basic embodiment is “knocked out” by prior art that your search didn’t uncover or that surfaced after your search.

Wants to Use College Logos for Cheerleading Site

Dear Rich: My partner and I are launching an informational website about college cheerleading. We are featuring squads from across the country. On one page, we list all of the schools featured on our site. We would like to use those various college logos, just to add some visual excitement to the page. Can we do this without permission from each school we feature? We think your use may be permissible but without knowing more about your website, we can't say with any certainty. So, because of the frequency of trademark lawsuits by colleges it may be worth investing in an attorney's opinion before launching your cheerleading enterprise. In any case, here's how an attorney may analyze the situation.
Nominative trademark fair use. As you may be aware, editorial (or "informational") trademark uses that inform, educate, or express opinions, are protected under free speech principles (sometimes referred to as "nominative trademark fair use"). But not all informational uses qualify -- for example, baseball cards provide information but baseball card manufacturers license rights from the MLB.
What are the standards? When determining nominative fair use, a judge may ask: Is there likelihood of confusion -- that is, are consumers likely to believe the colleges endorse or are associated with your site? If so, was the use of the college logos necessary to identify the schools? Did you make minimum use of the logos? Did you do anything to imply sponsorship or endorsement by the colleges? Here's more on how these decisions are made.

Wants to Post Movie on Facebook

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Dear Rich: My friend wants to upload a Hollywood movie in four parts so that his family can watch it on Facebook, one-fourth of the movie at a time. I told him that will be seriously illegal based on my limited (lay person) understanding of copyright laws. I cannot find the exact answer to the question. Considering that you and your friend have probably spent a disproportionate amount of time in front of warnings like the one shown here, these PSAs must be classified as epic fail. Yes, copying movies without authorization is an infringement. The punishment for Facebook users fits the crime -- if you're caught, you'll be blocked from uploading videos (usually for about six months). Facebook's user agreement also permits the company to terminate your account (horrors!!) and movie studios can also pursue you if they wish (unlikely). So, if Facebook membership is crucial for your existence, it's best not to risk your online presence for the sake of an illegal download.

Can We Use Facebook and Twitter TMs in Video Game?

Dear Rich: I have a client who is making an online/iphone game and in the game, the player will get a fictitious email from Facebook or Twitter with some info. Can they use those logos/trademarks in their game? They are filmmakers and I know they can use it in their film, but what about the game? Can they put a disclaimer that says those companies are not endorsing their game? We can't tell you whether you would get sued (although we think the chances would increase if the game becomes popular) and we can't tell you whether you would win your lawsuit (although we doubt your client wants to pay to find out). What makes the outcome so difficult to predict is that the law regarding trademarks in video games is complicated, and in any case, the use you're describing doesn't match neatly with video game case law (or as lawyers would say, your situation is "not on all fours" with other cases).
Video game standards. When a video game maker uses an unauthorized trademark within a game, a court weighs free speech and trademark rights by asking two questions: (1) Is the trademark artistically relevant to the video game? and (2) Would consumers find the use to be explicitly misleading as to the source of the game? In a recent case, two video game makers battled over the use of "Delta Force." A court applied the test and ruled that free speech permitted the use because the military use of the term "Delta Force" preceded the use by the trademark owner. In another case, the makers of Grand Theft Auto were permitted to use the trade dress and similar trademark of a Los Angeles tavern on first amendment grounds. In a third case involving the Bell helicopter trademark, a court would not permit the use in a video game under free speech rules, claiming that consumers might be misled as to Bell's involvement with the game. This article explains the rules and cases.
What about your use? The primary difference -- and what makes your case hard to call -- is that your client is using the trademark of a company that distributes video games (Facebook) and another company that provides video game feeds. (The other cases mentioned above don't involve the names of game-making companies -- they  involve third party trademarks for a bar, military battalion, and helicopter company.) It is a little bit as if an Xbox game were to include a fictitious character using a Playstation. Would Nintendo object? On the other hand, if we analogize to movies, we don't see any problem using fictitious Twitter or Facebook accounts in a feature film. In summary, (1) we think your lawsuit meter will go up if you create an iPhone game that incorporates prominent app trademarks, and (2) the law is not clear on whether your client's use is misleading. Don't Forget Apple. Also, be aware that Apple and other App store administrators have the right under their upload/license arrangements to remove apps that violate their intellectual policy rules. Apple's rules state your game cannot "violate, misappropriate, or infringe any Apple or third party copyrights, trademarks ..." So a complaint from Facebook may result in the temporary removal of the game.
What about the disclaimer?A disclaimer by itself is unlikely to shield you from a lawsuit (although it may mitigate your damages and demonstrate you were acting in good faith). To be effective, it must be prominent, distinguishable from other explanatory or merchandising copy, and appear near, or in connection with the unauthorized use. For example, in a 1998 case involving the use of Godzilla trademark in connection with a book, a court discounted the publisher's disclaimer as being inappropriate and stated that an appropriate disclaimer would have been: “The publication has not been prepared, approved, or licensed by any entity that created or produced the original Toho Godzilla films,” and the court suggested that the disclaimer would be printed on the front cover and spine of the book in a distinguishing color or typestyle.

Wants to Reproduce Movie Trailer in Kiosk

Dear Rich: What if all I will reproduce is a public movie trailer that I would just reproduce just the same way it was originally released by the studios but in an offline kiosk? Reproducing a movie trailer at an interactive kiosk is an  infringement of the movie studio's copyright. The questions you need to consider are (1) whether the studios will find out about your use (Are you installing your kiosk on Sunset Boulevard?) and (2) if they do find out, will they hassle you.
Won't my use help the movie? A trailer is an ad for a movie and in the competitive environment of movie sales, it's often in the studio's best interest to overlook infringements in order to get the word out. However, if the trailer is being used as a means to sell something other than tickets to the movie -- for example, the trailers are running as a sort of wallpaper in a clothing store -- the studios may choose not to overlook the use. Also, if you are installing kiosks at places such as malls or gas stations, the property owners may ask for indemnification --  meaning that you would have to pay to defend them against the studios, should they choose to sue.
How come people get away with it at You Tube? You may wonder, "If the studios aren't pursuing the thousands of people already copying movie trailers at You Tube and other sites, why do I need to be concerned?"  Keep in mind that the studios have already made peace with You Tube --  and the result is Content ID that sniffs out infringements and either blocks or monetizes them.

Can I Sell My Star Trek "Inspired" Music?

(cover of a Star Trek sound effects recording)

Can I sell my own compositions inspired by Star Trek and use "STAR TREK" in the album title? (example, "Star Trek: Eclipse (and other works). Do I need to say "inspired by"? If you used the title, Star Trek: Eclipse, it's reasonable to believe that some Trekkies would be confused into thinking that the music was from a Star Trek TV show or movie. In that case, you would be stepping on Paramount's trademark rights. Paramount/CBS have about 75 Star Trek trademark registrations including  Reg. No. 1931146 for prerecorded music.  You might avoid this confusion by titling your release, Eclipse: Music Inspired by Star Trek (and "music inspired by" should be the same font size as "Star Trek"). You should also include a disclaimer such as "Not affiliated with Star Trek or endorsed by Paramount Studios." Of course, if Paramount never learns of your doings in deep (cyber) space, none of this will be an issue.
Copyright issues? If you're not using any samples from the show and all of the music is original, it would be highly illogical for Paramount Studios/CBS to object to your compositions under copyright law.

Canadian Gallery Wants Photo Releases

photo by Lewis Hine Power (1920)

Dear Rich: A gallery in Canada offered me a solo exhibition next winter of a series of photo portraits of New York auto mechanics in their workshops. The owner is asking me to provide signed model releases from all the subjects, but unfortunately I don’t have any, and it would be impossible for me to get most of them now since I’ve lost touch with most of the subjects. I know in the US a model release is not usually required for the display of fine art and editorial photography, but I don’t know about the rules in Canada. But I also believe that the odds of any of my subjects complaining are extremely low. Is there a boilerplate assumption of liability that I can offer the gallery in lieu of model releases? Model releases release photographers (and their assigns) from liability for defamation, invasion of privacy, and most importantly, the right of publicity. The publicity rights would not affect fine art sales and are only triggered by a reproduction of the photo in connection with a product or service. The Canadian province in which you are exhibiting has similar common law right of publicity rules, and therefore, the most important reason for using a release is eliminated.
Release for lack of release. In any case, if you want to contractually assume liability, you could use a simple indemnity statement like this:

Photographer acknowledges that he has not obtained photo releases from the subjects of his photographs and agrees to indemnify and hold harmless Gallery, its assigns, licensees, and purchasers from all costs and expenses (including attorney fees) in connection with any successful third-party suit or claim arising from or based upon the lack of model releases.

If that doesn't work -- for example, because the Gallery wants broader protection -- substitute "photographic content" for "lack of model releases." In that case you will be assuming liability for all content-related claims such as copyright infringement.

How Do They Know We're Playing Music in Our Store?

Dear Rich: We're going to be opening a pipe and tobacco store and want to play recorded music in it. The landlord for the building says that we will have to pay a fee to ASCAP. My question is if we don't sign up with ASCAP how would they ever find out about our shop? For over 70 years, performing organizations such as a BMI and ASCAP have employed people (unaffectionately referred to as "spies") to locate and report back on establishments that play recorded music. If one of these representatives frequents your tobacco shop, you'll soon get a letter from the respective organization. In other cases, a disgruntled employee or customer may report the establishment to a performing rights organization. Of course there are exceptions -- for example no license is required if your establishment is less than 2,000 square feet -- and we've provided an article with tips on avoiding ASCAP and BMI fees.

Can I Patent Invention Based on Previous Invention?

Dear Rich: I have come up with an idea and did a patent search to see if there was anything similar to what my idea was.  There was something similar, but not exactly.  The patent for that item expired in 2003 after unanswered payment requests.  The original date was 1991 on the patent.  So, if I submit a request for my idea, even though different in several ways, but some similar thoughts, will I get rejected? If what you're claiming has already been invented (the prior art), then your invention is not novel and will not be awarded a patent. But if you have modified a previously patented device, then you may be able to obtain a patent on your improvement or modification --  for example, if you invented a paper clip that changes color depending on how many sheets of paper it is holding, you could patent your process for color adjustment resulting from the clip's resistance (though not the basic paper clip invention). This article provides more details on improvement and "new use" patents.