Arts Law For Everyone

Brand-Specific Domain Extensions Will Be Here Soon

2011-10-03T09:18:00.000-05:00

A gTLD is a domain name extension such as the familiar .com, .net and .org. Today there are roughly two dozen gTLDs – but soon there could be hundreds.

Very soon, companies, organizations and governments worldwide will be able to operate a gTLD of their own choosing – and branding. Between January 12, 2012 and April 12, 2012, organized entities may apply to form and operate their own gTLD registry. (Examples: .sony; .mcdonalds; .music)

Unlike registering one's trademark for an existing TLD, however, this is a significantly larger undertaking. In fact, gTLD applicants will be applying to create and operate a registry business. Just as ICM is the Registry Operator for the .xxx domain (see previous blog post), a gTLD applicant will be the Registry Operator for its chosen gTLD.

The costs and responsibilities for operating one's own gTLD are substantial. The evaluation fee alone is estimated to be $185,000. On the other hand, gTLD Registry Operators are the exclusive gatekeepers for the domains they manage. That means an organization operating its own gTLD it can deny registrations to competitors, cybersquatters and others, at will.

In the event multiple applicants seek the same gTLD, a bidding auction will ensue.

Trademark owners who decide not to operate their own gTLD may nonetheless be adversely affected if another party launches a gTLD that corresponds to the owner's trademark. Here is what brand owners and their advisors need to know:

After the application period closes in April 2012, ICANN will verify all applications for completeness. Shortly thereafter, ICANN will publish on its website the public portions of all applications considered complete.

After the list has been published, there will be a period of time for third-parties to file formal objections to the applications of others. Objection procedures will be specified in “Module 3” of the Applicant Guidebook.

Those who do choose to pursue gTLDs of their own will find a comprehensive library of background, procedures and instructions on the ICANN website. The application procedure is complex and extensive, however, so prospective applicants should begin the process as soon as possible, in consultation with their attorneys and brand advisors.

Protecting Trademarks from the .xxx Domain

2011-09-25T17:02:00.001-05:00

Synopsis

The owners of trademark registrations issued before September 1, 2011 have a short window of time within which to block others from registering their trademarks as .xxx domains.

Background

ICANN (the Internet Corporation for Assigned Names and Numbers) is the nonprofit organization charged with coordinating the internet's naming system. As the internet evolves, ICANN frequently reviews and adds to the universe of internet identifiers, or “domains.”

Earlier this year, ICANN resolved to introduce a new sTLD (sponsored top level domain) to identify websites in the adult entertainment industry. These new “.xxx” domains will be available globally to registrants in the “Sponsored Community” who provide services in the adult entertainment industry and who agree to adhere to specified online safety and self-regulation practices. The recommended practices are being developed by the International Foundation for Online Responsibility.

ICANN has designated ICM Registry, LLC (“ICM”) as the sole Registry Operator for the .xxx domain. As the Registry Operator, ICM is responsible for establishing and implementing .xxx policies and procedures, and for providing ICANN accredited registrars with the ability to offer this domain to their customers. A list of registrars presently authorized to offer the .xxx domain appears on ICM's website.

Trademark Registrants Have a Window of Opportunity

Trademark owners who are not members of the .xxx Sponsored Community may apply to opt out of .xxx, thereby preventing others from registering their trademark as a .xxx domain. The period of time during which this is possible is known as the “Sunrise B” phase of the domain's overall launch. Sunrise B commenced on September 7, 2011 and runs for 52 days. (Note: Most registrars indicate that Sunrise B ends on October 28, 2011; Melbourne IT, however, indicates that it will be closing Sunrise B on October 26.)

Information for Trademark Owners

Q: What should an eligible trademark owner do, to take advantage of Sunrise B?

A: Choose an authorized registrar and follow that registrar's instructions for obtaining a “Sunrise B” defensive registration.

Q: Are all trademark owners eligible?

A: No. The following restrictions apply:

The trademark owner must hold a trade or service mark registration of national effect that issued before September 1, 2011.
US Supplemental Register registrations are not eligible.
The holders of common law trademark rights are not eligible.
Sunrise B eligibility requirements appear in full, here

Q: Can the trademark owner block any domain during Sunrise B?

A: No. The domain sought must correspond exactly to the complete textual component of the registered trademark. For example, if the registration is ABC, the trademark owner may only register ABC.xxx

Q: What if a trademark owner is not eligible, or wishes to register a domain other than the exact trademark, or simply fails to take action during the Sunrise B period?

A: Under any of those circumstances, the trademark owner will need to wait until .xxx becomes available to the general public on December 6, 2011. The trademark owner should then register the desired terms as “nonresolving” .xxx domains.

Q: What if someone else registers the trademark as a .xxx domain before the trademark owner has an opportunity to do so?

A: The trademark owner would have to pursue available remedies using existing methods of domain dispute resolution, i.e., litigation and/or ICANN's Uniform Domain Dispute Resolution Policy (UDRP).

New Online Advertising Rules Likely

2011-06-03T08:28:00.000-05:00

The Federal Trade Commission (FTC) enforces our federal consumer protection law and regulations. One of the FTC's charges is to police the federal prohibition against "unfair or deceptive acts or practices." This includes advertising.

In May 2000 the FTC issued a paper called Dot Com Disclosures: Information about Online Advertising. "Dot Com Disclosures" provides guidance to businesses about how FTC law applies to online activities.

It seems ridiculously obvious, but: a lot has changed in eleven years! So the FTC is in the process of updating "Dot Com Disclosures." The result could be new rules governing online advertising.

Businesses that wish to be heard on these issues have an opportunity to comment. Comments must be received by July 11, 2011.

Copyright 2011 Elizabeth T Russell. Blog content is not legal advice.

Postage Stamp Saga Concludes

2011-04-28T09:34:00.000-05:00

Sculptor Frank Gaylord created human soldier figures that were included as part of the Korean War Veterans Memorial. Mr. Gaylord has been battling with the US Government for five years because an image of the soldier sculptures appeared without his authorization on a US postage stamp.

In February 2010 Mr. Gaylord "won" the case, when the United States Court of Appeals for the Federal Circuit held that Mr. Gaylord held the copyright to the soldier sculptures, and their use on the stamp did not constitute "fair use." You can read the Court's decision here, and see images of the sculptures at this prior post of Arts Law for Everyone.

[The Court's decision was not unanimous; a dissent by Judge Newman argued strongly that the majority's view was contrary to the contract for Mr. Gaylord's work (which required copyright to be owned by the Government); contrary to a statute governing works done in the service of the United States; contrary to US copyright law; and contrary to US policy governing access to national monuments. If you're interested in these issues, don't stop at the end of the majority's opinion: read the dissent.]

Following the Court's decision, the matter went back to the United States Court of Federal Claims for a determination of damages. Mr. Gaylord argued he was entitled to $3 million based on royalties from sales of the stamp.

Last week, the Court of Claims made its determination: $5,000. You can read the decision here.

Copyright 2011 Elizabeth T Russell. Blog content not legal advice.

The Four (+) Rights of Privacy

2011-04-11T11:20:00.000-05:00

If you've ever used real people in your work you've probably asked or at least wondered, "are they going to sue me?"

Anybody can sue you at any time, for any reason, and there's not much you can do about it. So the better question is, "if they sue me, are they likely to win?"

This blog is not legal advice and if you're asking these questions you need counsel specific to your facts and circumstances. And you need to know that these kinds of claims are governed by state law, so your advice needs to be state-specific. Here, though, is a general list of issues to consider.

Rights of Privacy

There are several different types of "invasion of privacy."

Disclosure

This type of invasion of privacy is triggered by the public disclosure of private facts in which the disclosure is highly offensive to a reasonable person. The facts disclosed are true, and no element of falsity is involved.

Intrusion

You're at risk for this type of claim if you intrude, physically or otherwise, into the solitude or seclusion of your subject in a manner which is highly offensive to a reasonable person. Think of it as crossing without permission into their "zone of privacy." (Example: placing a hidden camera in the subject's bedroom.)

Appropriation

This form of invasion of privacy involves the unauthorized commercial use of a person's identity. It is similar to the right of publicity (see below), but here's the basic difference: an infringement of the right of publicity focuses on financial injury, while an invasion of "appropriation privacy" focuses on how it makes the subject feel.

False Light

Invasion of privacy by "false light" involves a publication which places the subject in a false light that would be highly offensive to a reasonable person. It's very similar to defamation. (Example: you use Jane Doe's photo in connection with a story about prostitution -- but you used the wrong Jane Doe. The innocent one sues for invasion of privacy because you placed her in a false light).

Defamation

Defamation (libel and slander) involves publishing to others a false statement (presented as fact) that is understood to be about the subject and which harms the subject's reputation. There are different standards of proof depending on whether the subject is or is not a "public figure."

Right of Publicity

The right of publicity, in general terms, is the right to control the commercial use of one's identity. As with the various rights of privacy, courts often struggle with the task of balancing the subject's rights against First Amendment concerns you may legitimately advance.

Copyright 2011 Elizabeth T Russell. Blog content not legal advice.

Google Book Settlement: What About The Data?

2011-03-30T13:02:00.000-05:00

If you've heard about the Google Book Settlement but don't really know what it's all about, here's what's going on:

Google scanned millions of books, to create a digital library
Google didn't get permission from the copyright holders of the books
Authors and publishers sued Google for copyright infringement
The lawsuit was (is) a class action -- so the authors and publishers essentially represent ALL authors/publishers whose copyrights Google may have infringed
Instead of fighting it out in court, the parties came up with a Settlement Agreement (and then when too many people hated it, they came up with an Amended Settlement Agreement)
If individual authors/publishers did not want to be included in the settlement (which would preserve their rights to sue Google individually, and would [theoretically] prevent Google from exploiting their books in the future), they had to OPT OUT
The way to opt out was to fill out a form on Google's website
The Amended Settlement Agreement ("ASA") had to be approved by the court
Last week the court rejected the ASA, for a multitude of reasons
So now the lawsuit is back to square one. Either they start fighting about whether Google did or did not commit copyright infringement on a massive scale; or they come up with a new settlement agreement that the court might actually approve. Either way, there's not likely to be final resolution anytime soon.

But Google might already have won.

Thousands of authors and publishers chose to opt out. I happen to be one of them. In doing so, we provided Google with information about our identities and the literary works in which we claim copyright interests. That information was supposed to be turned over to a central Book Registry that would be formed as part of the settlement. But if there's no settlement, there's no Book Registry.

And Google's sitting on a delicious database of information.

Performance Royalties For Performers/Labels

2011-02-27T10:30:00.000-06:00

Just a reminder. If you are an independent record label/artist or a featured performer on a sound recording, don't forget to register with Sound Exchange.

You are entitled to royalties for digital performances of your work.

Copyright Crazy Talk

2011-02-19T13:29:00.002-06:00

Madison, Wisconsin’s Isthmus features a story this week about Zooniversity, the hip-hop brainchild of two University of Wisconsin students. The duo made headlines with The Coastie Song and, most recently, the national sensation Teach Me How To Bucky.

As a copyright lawyer, statements like these trigger my attention:

It's about two UW students who are redefining what it means to be musicians in the digital age, and what it takes to win a mass audience in the post-record-industry era.

Zooniversity are blazing the trail of a new kind of artist: the social network musician. Social network musicians remix what's already been published to make it more relevant to their target market, their followers.

American youth have long navigated commercial culture. But in the digital age, it's a culture that can be downloaded to a hard drive, and, more important, it can be edited.

Most people reading the article probably thought, “Cool.”

I read the article and thought, “Damn. These guys are a lawsuit waiting to happen.”

My next thought, (frightened at how boring I must sound to others): “Seriously? Did you just say that??”

I love what I do, but I’m tired of telling wonderfully creative people how and why their art is likely to land them in court.

So I read the article again, with different eyes. This time I stopped looking for problems and started thinking about solutions.

I don’t know and have never met the Zooniversity guys. So I can’t speak for them. But during that second read I imagined a conversation in which I methodically explained to them such arcane points of law as, for example, the fact that parody doesn’t automatically qualify as fair use; that there’s a difference between a musical work and a sound recording; and that although it might sometimes be OK to sample a musical work, it’s never OK to sample a sound recording without a license. In this imagined conversation they politely nodded their heads, we shook hands, and they went back to doing what they do. Soon thereafter, it hit me: they don’t care.

Of course, I’m not passing judgment on the Zooniversity guys. (I don’t know them, remember?) What I’m suggesting is that what Isthmus calls this “new kind of artist: the social network musician” is refusing to play by antiquated rules. OK, fair enough. That’s how change happens. So how can we be proactive and think about new rules that might work for everybody?

In response to what you’re probably now thinking: Yeah, I know. But then one day they did actually fly to the moon….

Let’s start with what we have; identify some mutual objectives; and then let ourselves be free and creative enough to throw out crazy ideas. (Oh, and don’t tell the academics we’re doing this. They are such downers.)

What we have is the US Constitution. It’s what allows us to make copyright laws and it tells us why we have copyright in the first place. Please, let’s not mess with this. Changing the Constitution is a dangerous proposition, especially today. So let’s agree: we’re just going to keep the Constitution the way it is.

Our mutual objectives are basically (surprise!) what the Constitution tells us anyway. We want a rich public domain of materials that everyone can use and enjoy. We also want the creators of such materials to be able to make a living. It’s that simple. Anyone disagree?

OK. So now let’s talk crazy. Is it crazy to ignore present corporate and political realities? Of course. But let’s do it anyway. Putting that crap aside, what kind of system would fit within our Constitutional framework and achieve our mutual objectives? The current system provides for automatic copyright that lasts for the life of the author plus 70 years; has a fair use doctrine; and offers statutory exceptions that permit unlicensed use of copyrighted material under certain circumstances. It’s not a terrible way of respecting the balance between the rights of authors and the rights of the public.

But it doesn’t work for people like the Zooniversity guys whose art depends on being able to re-work the creations of others.

The problem might be that the current system, by default, applies to everyone. Is it crazy to think about the system applying differently to different classes of authors? Yes. But let’s do it anyway. Suppose authors had this choice: a.) do nothing and have the default system apply to them; or b.) opt out of the system’s protections for their work and, in exchange, have unfettered access to the work of others who have also opted out. Creative Commons is a step in this direction, but I'm talking about something on a larger scale that doesn’t involve any kind of licensing (which Creative Commons, like it or not, still does.)

So I’m just curious. Put away all the practical, academic arguments and pretend nobody’s looking.

If it were you, which option would you choose?

Copyright 2011 Elizabeth T Russell. Blog content not legal advice.

Defamation: Even A Local Developer Can Be A "Public Figure"

2011-02-08T14:19:00.001-06:00

State laws differ, but the general definition of defamation is "a false statement communicated to a third party that tends to harm the subject's reputation." That's what anyone alleging defamation has to prove: a false statement; communication to a third party; and harm to your reputation.

If you are a "public figure" you have to prove something else, in addition. You have to prove that the defendant (the person who defamed you) acted with "actual malice." In the state of Wisconsin actual malice means that the allegedly defamatory statement was made with "knowledge that it was false or with reckless disregard of whether it was false or not."

If you're planning to sue somebody for defamation, then, you first need to look at whether you are or are not a "public figure." Note: that doesn't just mean "elected official." As one Wisconsin developer recently learned, it's not that difficult to be considered a public figure.

Thomas Krans is the developer. Robert Wicklund and Dennis Newingham distributed a pamphlet asserting that Krans' development site posed health hazards to the community. Krans sued, raising claims of defamation. Wicklund and Newingham said, "Not so fast, Mr. Krans. You are a public figure and we did not act with actual malice. So your complaint should be dismissed."

Their argument prevailed.

The Wisconsin Court of Appeals found that Mr. Krans was, indeed, a "limited purpose public figure." Here's how they reached that conclusion:

Determine whether there was a public controversy. (There was.)
Isolate the controversy. (There was great public debate about Mr. Krans' development, and the debate was affecting the town board elections.)
Determine whether Mr. Krans' role in the controversy was more than tangential. (It was. He was the developer and as such he was the center of the controversy. )
Determine if the claimed defamation was germane to Mr. Krans' participation in the controversy. (It was.)

Mr. Krans was therefore a "limited purpose public figure" -- so to prevail with claims of defamation he was required to prove that Wicklund and Newingham acted with actual malice.

The court reminded us that actual malice requires showing that the false statement was made "with a high degree of awareness of ... probable falsity," or that the defendant "in fact entertained serious doubts as to the truth of his publication." The evidence showed that, at worst, these defendants failed sufficiently to investigate the information before publishing their pamphlet. But that does not rise to the level of actual malice. And so the defamation claim was properly dismissed.

Krans v Wicklund and Newingham was decided by the Wisconsin Court of Appeals on February 3, 2011.

Copyright 2011 Elizabeth T Russell. Blog content not legal advice.

Settlement On The "Hope" Poster Lawsuit

2011-01-12T12:04:00.000-06:00

It looks like the Shepard Fairey matter has come to an end.

NPR reports that Mr. Fairey and the AP have arrived at a settlement.

Settlement is a good thing, but it also means there's no legal resolution to these issues and so we have little guidance for the future.

That's disappointing.

Copyright 2011 Elizabeth T Russell. Blog content is not legal advice.

Trademark: What Does "Use In Commerce" Really Mean?

2011-01-05T11:05:00.001-06:00

When, in The Sound of Music, Captain Von Trapp was giving Elsa the boot, Elsa said wanly, "and somewhere out there is a girl who I think will never be a nun..."

Well here's a mark that I think will never enjoy the protections of Federal trademark registration.

Yes, the application for registration was opposed by [the famous] P. Diddy.

And although there are plenty of good reasons why P. Diddy shoulda/woulda won the opposition based on likelihood of confusion, the reason this application crashed and burned was because the applicant never actually used the mark in commerce.

Worse, in its application the applicant said it HAD actually used the mark in commerce. (Oops, that's fraud.)

Here's what many business owners don't fully appreciate, and what tripped up the iDiddy applicant:

Purchasing a domain for your mark is not "use in commerce."
Hiring someone to design a logo for your mark is not "use in commerce."
Ordering inventory is not "use in commerce."
Shipping inventory to prepare for selling the goods is not "use in commerce."

What is "use in commerce?" This is paraphrasing the law, but essentially:

Using the mark on goods or their containers, tags, labels or directly-associated displays; and
Selling or transporting those goods (with the mark) in the ordinary course of trade, in commerce that can be regulated by Congress (think: across state lines or national borders).

Preparing to do that doesn't count. You need actual use in commerce.

Copyright 2011 Elizabeth T Russell. Blog content is not legal advice.

Registering “Work Made For Hire” with eCO

2010-11-28T11:37:00.000-06:00

It is always good to review copyright’s “work made for hire” doctrine. It’s often misunderstood. And as I recently experienced, the Copyright Office itself may be contributing to the confusion.

Let’s start with the basics.

• General rule: The person who creates copyrightable material is called the “author.”

• General rule: Ownership of copyright vests initially in the “author” of the work (17 USC §201[a]).

If you create a copyrightable work, as its “author” you own the copyright and you can do with the copyright whatever you wish. For example, you can keep the copyright; you can license all or parts of it to others; or you can transfer ownership of the entire copyright to someone else. Transferring the whole copyright to someone else is called an “assignment” and must be done in writing.

The “work made for hire” doctrine creates exceptions to these general rules. If work made for hire (WMFH) applies, the creator of the work is not considered the author, and never owns the copyright -- even for a moment. That’s pretty major! So it’s important to understand how this works.

If we suspect that WMFH might apply, the threshold question is whether the work itself qualifies as WMFH. According to US copyright law, there are two ways work can qualify as WMFH:

1. If the work is prepared by an employee within the scope of his or her employment; or

2. If the work is specially ordered or commissioned for use as:

a. A contribution to a collective work;

b. Part of a motion picture or other audiovisual work;

c. A translation;

d. A supplementary work;

e. A compilation;

f. An instructional text;

g. A test;

h. Answer material for a test; or

i. An atlas

(An atlas? Really?) Anyway.

Many people think if they paid someone else to create copyrightable work, it’s automatically WMFH. They also think that if they call the work WMFH…like, in a contract… it is. Neither is true. If the person who created the work is an actual employee and created the work in the scope of his or her employment – OK. It’s WMFH. Otherwise, no matter who paid and no matter what a contract might say, the work is not WMFH unless a.) the work itself falls into one of those nine categories listed above; and b.) a written agreement was in place before the work was created, specifying that the work would be WMFH.

Given these requirements, a lot of work that people assume to be WMFH – really isn’t. And as a result, many people who think they own the copyright to such work, really do not.

Assuming the work actually is WMFH, the employer or other person for whom the work was prepared is considered the “author” and thus owns the copyright from the very beginning. That brings us to the main point of this post: how to register work that does (and does not) qualify as WMFH, using the Copyright Office’s online eCO registration system.

I will use two examples. In the first, the work was WMFH because Client A’s employee created the work in the scope of his employment. In the second example, Client B engaged Company X to create the work.

Example #1

Steven works as a graphic designer for Client A and designed a new logo for the company. Assuming the logo is copyrightable, the work is clearly WMFH because Steven created the work in the scope of his employment. Client A therefore owns the copyright.

Client A then goes to eCO to register its copyright in the logo. When eCO asks for “author,” the answer is “Client A” because in WMFH situations the employer is considered not only the owner of the copyright, but also the author. Client A indicates that the work is WMFH and does not need to identify Steven as the creator. When eCO then asks for the “claimant,” the answer is also, “Client A.” The claimant is the current owner of the copyright interest being registered. In the case of WMFH, the employer or employer for hire is considered both the author and the claimant.

Example #2

Client B engages Company X to develop a computer software application. Is the work WMFH? No. Company X is not an employee of Client B, and the software application does not fall into any of the nine categories of work that could, possibly, be WMFH. Knowing this, Client B obtained from Company X a written assignment of copyright to the software application. Had Client B not done this, Client B would not own the copyright. But Client B was well advised, and now (because of the assignment) does own the copyright.

Client B now goes to eCO to register its copyright in the software application.

Q: Who is the author?

A: Company X (because Company X created the work.)

Q: Who is the claimant?

A: Client B (because of the assignment.)

But here’s the problem: eCO’s online form doesn’t allow us to enter an organization as the author. It would allow us to enter an individual as the author and then indicate that copyright was acquired by written assignment. But if we enter an organization (Company X) as the author and then (correctly) indicate that the work was not WMFH, the following error message pops up: “If an organization is named as author, the ‘work made for hire’ question must be answered ‘Yes.’” I pointed this out to the Copyright Office and our exchange went something like this:

Me: An organization was engaged to create the work, but it’s not WMFH and copyright was transferred by written assignment.

CO: You have to indicate that it was WMFH.

Me: But it isn’t.

CO: You have to indicate that it was WMFH.

Me: But it isn’t.

CO: Say it anyway.

See the problem?

Sound Recording Copyright Study

2010-10-29T20:40:00.000-05:00

Federal copyright law only protects sound recordings that were fixed on or before February 15, 1972. That doesn't mean, however, that pre-1972 sound recordings are free to use. Quite the contrary, in fact.

Pre-1972 sound recordings are governed by a huge patchwork of state statutory and common law from their date of creation until 2067 (2047 in California). The upshot is: it's almost impossible to know what law(s) might control or restrict your use of any particular pre-1972 sound recording.

The US Copyright Office is undertaking a study on the desirability of alleviating this uncertainty by bringing pre-1972 sound recordings under federal copyright jurisdiction, now. A statement from the Copyright Office says:

The Copyright Office is launching its study by publishing a notice of inquiry in the Federal Register, requesting written comments from all interested parties regarding federal coverage of pre-1972 sound recordings. Specifically, the Office seeks comments on the likely effect of federal protection upon preservation and public access, and the effect upon the economic interests of rights holders. The Office also seeks comments on how the incorporation of pre-1972 sound recordings into federal law might best be achieved.

The Copyright Office's statement appears here and contains a link to the form for submitting comments.

Choosing A Lawyer

2010-10-08T12:58:00.000-05:00

I just attended a Continuing Legal Education seminar.

As I observed the behavior of other lawyers in the room it occurred to me that clients should be permitted to watch through a one-way mirror. Most of the lawyers in the room were polite, attentive and eager to learn. Those, in my view, are the lawyers you'd most want to hire.

The others were arrogant. They talked to one another during the presentations. They checked email, ceaselessly. They unwrapped candy, loudly. They went out of their way to make it known they were far too important for this. Maintaining their (in my view questionable) competence was an absolute inconvenience.

Arrogance is rarely a positive attribute. It interferes with effective communication, whether that be with you the client, or with opposing counsel. When I encounter arrogant lawyers in a transaction my respect for them immediately plummets. And this may or may not be justified, but so too does my level of trust.

Those who are too important to learn, are suspect.

Tips For Arts Entrepreneurs

2010-10-03T14:45:00.001-05:00

When I speak to arts-related audiences there's never enough time to cover what I want to convey. An hour or two -- or even a full day -- allows us just barely to scratch the surface.

So lately, I have been providing participants with a bare-bones list of legal issues that I call "Tips for Arts Entrepreneurs." The list is not legal advice, and it isn't meant as instruction. Its point is just to bring certain issues to mind. My objective is to remind entrepreneurs that it's their responsibility to become properly informed about the legal issues that affect their lives and their businesses.

I have decided to start posting the "Tips" individually, on Facebook. Beginning next week I will post one tip per day.

If you'd like to follow the tips, you can follow Russell Law on Facebook (see the side panel to this blog for the link).

And How Does That Make You Feel?

2010-07-24T11:01:00.001-05:00

As humans, our emotions set us apart from other creatures.

As lawyers, our clients’ emotions are a big pain in the ass.

OK, I guess this is why I’m a lawyer and not a therapist. But clients often base their decisions on emotional factors, and this generally leads to bad legal consequences. So in order to be a good lawyer I have to honor the client’s feelings and help him/her make legally prudent decisions notwithstanding emotions that may be powerfully conflicting.

Recently, one client asked me to draft a recording industry contract for use with “friends” who wanted to promote his career. He knew that doing business with these people was a bad idea. It would have been obvious to almost anyone. I told him so. Yet he so wanted the situation to be good and workable that he couldn’t say, “No.” He told me repeatedly that his guts said it was a bad idea, but “they’re being so nice” and “I feel like I owe them.”

The correct decision was obvious: don’t do business with these people. Yet the emotional factor was so dominant that it took months for this client finally to say, “No.”

I used the following analogy with this client. My son is learning to drive. Recently we were out for a practice drive and he was waiting to turn left at an intersection. He hasn’t yet learned to estimate the speed of other vehicles and the time it is likely to take before they reach you. He asked me if he should make the turn. I told him I could not answer, because it would always be his decision. So he asked, “Well, how do I know?” I told him that if he had doubts, the answer was to wait. The likelihood of an accident would be far less than if he made the move knowing in his guts there might be a problem.

Clients often come in wanting to sue someone, just because they’re angry. Usually there’s no legal basis for a lawsuit, but they want to vent. At that point, again, it is my job to help them separate their feelings from their legal options.

Another emotion that colors my world? Fear. I can’t tell you how many times a client will ask me to draft a contract for a complex business transaction, and then instruct me to “keep it short” so the other side doesn’t get scared off. Really? Which critical protection do you want to leave out? If you want to read more on my views about “keeping it short,” I’ve posted an essay on my website.

As you navigate the legal issues of your life and business, know that a good lawyer will respect your feelings and honor them – and then advise you to do something that may contradict them completely. You’ll find that very difficult.

But give it a try, OK?

Copyright 2010 Elizabeth T Russell. Blog content is not legal advice.

Surnames as Trademarks

2010-06-17T10:49:00.002-05:00

Trademark law says you can't register a trademark that is "primarily merely a surname." So if your mark was FITZGERALD you would get a refusal if you tried for a federal registration.

But what if your mark was P.J. FITZGERALD?

According to the Trademark Trial and Appeal Board (TTAB), that would be OK. On June 11, 2010 the TTAB issued an opinion finding that P.J. FITZGERALD, INC. is not "primarily merely a surname."

Here are some excerpts from the TTAB's opinion:

“Merely” is synonymous with “only,” and “primarily” refers to “first in order” or “fundamentally.” Thus, we must determine whether P.J. FITZPATRICK, INC. is fundamentally only a surname.

There is no doubt that FITZPATRICK alone is primarily merely a surname. There is also no doubt that P.J. FITZPATRICK, INC. is clearly more than just a surname. However, the issue is whether the proposed mark, under the law, is primarily (i.e., fundamentally) only a surname. The law is settled that the mere addition to a surname of an entity designation such as “INC.” does not transform the surname into a mark.

So adding "Inc." will never turn a mark that is primarily merely a surname, into a registrable trademark.

But adding two initials seems to do the trick:

We find that in this case the initials P.J. coupled with FITZPATRICK would be perceived as the given name. Thus, P.J. FITZPATRICK, INC. cannot be primarily merely a surname because it comprises an entire personal name, not “merely” a surname.

How about adding only one initial? The TTAB left that door open. They didn't come right out and say that's not good enough (though your case certainly would be weaker than if you had two initials); they just said it will depend on the overall commercial impression and facts of the specific case.

Copyright 2010 Elizabeth T Russell. Blog content is not legal advice.

Respect For Performers

2010-06-02T09:55:00.000-05:00

This has nothing to do with law. I'm just tired of audience members being so rude.

I'm talking to you, parents of student musicians at James Madison Memorial High School in Madison, Wisconsin. It is not OK to take cell phone calls during the concert. It is not OK to text during the concert. (Did you ever notice that the screen on your phone glows at roughly the same wattage as the Times Square marquee?) It is not OK to march down to your seat in the middle of a selection or a scene.

It is not OK to help your other child with her math homework, during the concert. And the babies and toddlers? Bringing them along isn't fair to them, or to the performers, or to the other audience members.

Didn't anyone ever teach you that when you attend a performance it is your job to sit there, pay attention and shut up?

More importantly: if you never learned, how are your kids going to learn? We're devolving into a rude, thoughtless society of self-centered boors. Nice legacy, parents. It's bad enough our kids have to fight to even have art, music and drama in school. They work and practice; they produce and share truly amazing gifts of art -- and you behave like neanderthals.

And not so fast, high brow audience members of the Madison Symphony Orchestra in Overture Hall in Madison, Wisconsin. You aren't much better. Shut up! That goes for your comments and your candy wrappers and snapping your gum. You are an embarrassment and an annoyance and quite frankly you are a major contributor to the decline in attendance at classical performances.

Those who wish to "save" the performing arts should focus some attention on audience education.

More On The Dangers Of Do-It-Yourself Trademark Registration

2010-05-21T09:32:00.002-05:00

You know what they say about assumptions.

This week alone I met two people who wasted their time and filing fees by attempting to register trademarks on their own. One person made an incorrect assumption about what a trademark is, and registered the wrong mark. The other person made an incorrect assumption about who can own a trademark, and listed the wrong owner.

Both people might very well end up with registrations. And those registrations will be worthless.

Think about all the people out there who have made similar errors. They hold and proudly display their certificates of registration from the US Trademark Office. They proclaim how easy it is to register a trademark on your own.

I hope they never encounter situations requiring them to invoke the benefits of federal registration, though, because these people will find themselves with nothing.

If you registered your own trademark it might be a good idea to have a trademark lawyer look things over to make sure you have what you think you have.

Copyright 2010 Elizabeth T Russell. Blog content is not legal advice.

For Musicians: New Artist Checklist

2010-05-13T17:41:00.000-05:00

Sound Exchange has released the New Artist Checklist. It's a list of basic tools and tips for emerging musical artists (register your copyrights; draft a band agreement; form a company; etc.) Check it out.

US Privacy Bill Drafted

2010-05-05T10:56:00.001-05:00

At present the United States does not have federal legislation requiring companies to post clear and understandable privacy notices when they collect personally identifying information from consumers.

The European Union imposes strict obligations in this realm; the state of California also has privacy laws applicable to its residents. We also have industry-specific privacy laws in the United States (as, for example, in the health and financial services industries). So many companies choose to post privacy policies -- but applicable law is a patchwork at best.

That might change.

Draft legislation was released yesterday by Rep. Rick Boucher (D-Va) and Rep. Cliff Stearns (R- Fl). According to the New York Times, the lawmakers hope to introduce formal legislation within the next month.

If you run a business, keep your eye on this. It will affect you.

Copyright 2010 Elizabeth T Russell. Blog content is not legal advice.

Trademark Registration: Should You Do It Yourself?

2010-04-14T10:09:00.000-05:00

It's very difficult to supply the correct answer to this question without sounding self-serving. But the correct answer is, "No."

Yes, you can submit an application for federal trademark registration on your own. But it's not about just being able to fill out a form. If you haven't sufficiently analyzed your proposed trademark, searched for competing uses and used the mark in an acceptable manner you will receive a rejection and you will lose your filing fees. Worse, you may lose substantive rights to the mark that otherwise you might have been able to preserve.

The Trademark Manual of Examining Procedure contains all the rules you need to know. Take a look. Click on all the links (and I do mean all of them). Are you comfortable that you know and understand all those rules? If not, use a trademark attorney.

Should you use one of the "do it quick and cheap" filing services? In my view, no.Those services are not providing you with the legal advice, analysis and strategy you need to make informed decisions. Essentially they are filling out forms for a fee, just as you would be doing if you'd chosen to go it alone. And if the trademark examiner cites a problem and issues an "office action" you're going to need an attorney anyway; the services cannot ethically advise or represent you.

If you're serious enough about your business to be considering trademark protection, choose to do things correctly...the first time.

If it's more appealing to cut corners...perhaps you're not that serious about your business.

Are Computer Consultants "Professionals?"

2010-04-06T17:20:00.000-05:00

Are computer consultants "professionals?"

In Wisconsin it looks like the answer might be, "no." For now.

The Wisconsin Supreme Court recently had an opportunity to resolve that question, but chose not to. Here's what happened.

Racine County engaged the services of a computer systems and programming consultant to upgrade its human resources, payroll and financial software systems. When the consultant (Oracular) failed to deliver certain elements of the project and failed to meet its deadlines, Racine County sued for breach of the consulting agreement. Oracular argued that because the agreement was one for professional services, a.) the basis for liability had to be a heightened standard of negligence as opposed to simple breach of contact, and b.) such negligence could only be established by the testimony of an expert witness.

The trial court agreed with Oracular.

Racine County appealed.

The Court of Appeals reversed, concluding that computer consultants are not "professionals" and therefore not subject to professional standards of care. According to the Court of Appeals, the consulting contract was a simple contract for services so there was no need for expert testimony about negligence.

Oracular then appealed to the Wisconsin Supreme Court.

The Supreme Court issued its decision on April 2, 2010. The Supreme Court agreed that expert testimony was not required in order for Racine County to proceed with its claims -- but the Court reached its conclusion on different grounds than the Court of Appeals. The Supreme Court's reasoning is fascinating only to lawyers, so I'll skip to the part that consultants and the businesses that engage them might find interesting.

The Court of Appeals hadn't just proclaimed that computer consultants are not professionals. No. In reaching its conclusion the Court of Appeals adopted an eight-factor test (!) defining just what it takes to be considered a "professional" for purposes of imposing heightened standards of professional care.

Six of the factors came from a New Jersey case (the requirements of extensive formal training and learning, admission to practice by a qualifying licensure, a code of ethics imposing standards qualitatively and extensively beyond those that prevail or are tolerated in the marketplace, a systemfor discipline of its members for violation of the code of ethics, a duty to subordinate financial reward to social responsibility, and an obligation on its members, even in non-professional matters, to conduct themselves as members of a learned, disciplined, and honorable occupation)...

...and two came from New York (being a learned profession exemplified by law and medicine, and a relationship of trust and confidence carrying with it a duty to counsel and advise clients).

That's pretty specific.

Yet the Supreme Court specifically declined to reach the question of whether a computer consultant is a "professional." Said the Court, therefore, "we take no position on the reasonableness of the court of appeals' eight factor test."

I think that leaves us with an eight-factor test out there, that may or may not be reasonable. It certainly hasn't been struck down, so computer consultants and businesses engaging them should be mindful of these factors and the likely theories of liability when crafting consulting agreements.

Setback Today For Net Neutrality

2010-04-06T11:10:00.000-05:00

In September 2008 I mocked bureaucracy in a brief post about Net Neutrality.Today, it's no laughing matter.

As the New York Times succinctly explains, Net Neutrality "is the center of a debate over whether... companies [providing internet service] can give preferential treatment to content providers who pay for faster transmission, or to their own content, in effect creating a two-tier Web, and about whether they can block or impede content representing controversial points of view."

Today the United States Court of Appeals for the District of Columbia held that the Federal Communications Commission (FCC) lacks authority to regulate Comcast's practice of interfering with its customers' use of certain peer-to-peer networking applications.

The decision represents a major victory for internet service providers and a setback for Net Neutrality. It is available here.

Copyright: Termination Rights Can Help Remedy Bad Deals

2010-03-29T14:51:00.003-05:00

In legal terms, an assignment is the act of transferring your interest in property to another person or entity. The copyright in your work, for example, is a type of property (“intellectual property”) that can be transferred (i.e., “licensed” or “assigned”) to someone else. As the author (the creator), you own all copyright interests to work you create, from the very moment you fix the work in a tangible medium of expression. Thereafter, you can do whatever you want – not only with the work itself, but also with your copyright interests in the work.

In commercial transactions (e.g., publishing; record deals) copyright owners are often asked to transfer their copyrights to others by license or assignment. The entity receiving the copyright goes out and exploits the work, and then pays royalties to the original author.

What if that original author is you, and you make a bad deal??

Well, you have to wait several decades -- but there is a way to get your copyright back.

The Copyright Act gives authors (and some heirs and representatives) the right to terminate certain grants of transfers or licenses. Termination rights (also referred to as ‘‘recapture rights’’) allow authors and their heirs a second opportunity to share in the economic success of their works. In a sense, they provide authors with a long-term insurance policy on the value of their copyrights. The House Report accompanying the 1976 Copyright Act states that such provisions are needed "because of the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.’’

Termination rights may only be exercised within certain windows of time, and the party exercising the termination right must follow very specific statutory procedures.

At this time the Copyright Office is soliciting public comment on a rather arcane point of law involving termination rights. I bring this to your attention not because this arcane point of law is likely to affect you (though, of course, it might!) -- but rather because the Copyright Office's request for public comment contains a nice, readable explanation about what termination rights are and how they work.

Nothing on this blog is ever intended as legal advice, and this post is no exception. Termination rights are wonderful tools for copyright owners and their heirs -- but exercising them is not something you should attempt on your own. Seek specific advice from your copyright lawyer.

Sculptor Wins: US Postage Stamp Infringes Korean War Memorial Copyright

2010-02-27T14:41:00.001-06:00

On February 25, 2010 the United States Court of Appeals for the Federal Circuit told the United States government that incorporating a photograph

of the Korean War Veterans Memorial

on a postage stamp

was not fair use.

Read the decision here.

Visual Artists Rights Act Applies To Unfinished Work

2010-01-30T17:19:00.003-06:00

On January 27, 2010 the First Circuit Court of Appeals issued a rare decision interpreting the Visual Artists Rights Act (VARA). VARA provides certain "moral rights" to the authors of works of visual art. (The text of VARA appears here; there are also conversations about VARA in Art Law Conversations.) There is not a lot of caselaw interpreting VARA, so when a federal Court of Appeals issues an in-depth decision such as this, it's a significant event.

This case involves a long-standing dispute between Swiss artist Christoph Büchel and the Massachesetts Museum of Contemporary Art (“MASS MoCA”).

Here's the background.

MASS MoCA strives to offer visual artists “the tools and time to create works of a scale and duration impossible to realize in the time and space-cramped conditions of most museums,” and prides itself on exposing its audiences to “all stages of art production: rehearsals, sculptural fabrication, and developmental workshops are frequently on view, as are finished works of art.” An area known as Building 5 is MASS MoCA’s signature exhibition space, which spans the length of a football field.

In 2006 Büchel conceived of an ambitious, football-field-sized art installation entitled Training Ground for Democracy, which was to be exhibited at MASS MoCA in Building 5. The project was to be Büchel’s largest venture to date; he conceived of the exhibit as “essentially a village, ... contain[ing] several major architectural and structural elements integrated into a whole, through which a visitor could walk (and climb).” Major components were to include a movie theater, a house, a bar, a mobile home, various sea containers, a bomb carousel, and an aircraft fuselage. Büchel was not always on-site as the exhibit was being prepared. Instead, under Büchel’s guidance from Switzerland, MASS MoCA was supposed to obtain and construct many of these components.

Things went very badly, very quickly. MASS MoCA felt its budget for the project swelling out of control. Büchel then became dissatisfied with the way in which MASS MoCA was implementing his instructions and procuring items necessary for the installation. The relationship deteriorated to the point where Büchel stated he would not allow the exhibit to open in his name, and he did not return to Massachusetts to complete the installation. MASS MoCA finally announced the cancellation of Training Ground, and contemporaneously publicized the opening of a new exhibit entitled Made at MASS MoCA, which was to be “a documentary project exploring the issues raised in the course of complex collaborative projects between artists and institutions.”

In order to enter Made at MASS MoCA, visitors would have to pass through Building 5, which still housed the materials and unfinished fabrications that were to have comprised elements of Training Ground for Democracy. MASS MoCA placed yellow tarpaulins over the unfinished Training Ground work. There was great dispute, however, about whether the tarps actually concealed the individual components and design elements of Training Ground, or whether they simply “hid an elephant behind a napkin,” effectively inviting individuals to peek behind the coverings and view Büchel’s unfinished work.

In May 2007 MASS MoCA went to court seeking a "declaratory judgment" that it would be OK for them to publicly display the unfinished components of Training Ground. Mr. Büchel responded with claims that he was entitled to relief under VARA because MASS MoCA had intentionally distorted and modified his work. He also claimed that displaying the work publicly without his permission constitued copyright infringment.

A complete legal analysis is beyond the scope of this blog post. Here, however, is a summary of the First Circuit's holdings:

1. VARA's protection of an artist's moral rights extends to unfinished creations.
2. The right of integrity under VARA protects artists from distortions, mutilations or modifications of their works that are prejudicial to their reputation or honor.
3. Mr. Büchel raised a viable claim that MASS MoCA violated his VARA right of integrity by modifying Training Ground over his objections in a manner that harmed his honor or reputation. (This issue will now go back to the lower court for resolution.)
4. Mr. Büchel raised a viable claim that MASS MoCA infringed his exclusive right under section 106(5) of the Copyright Act to display his work publicly. (This issue will now go back to the lower court for resolution.)

Wisconsin Adopts “Single-Publication Rule” For Internet Defamation

2010-01-28T10:24:00.000-06:00

On January 27, 2010 the Wisconsin Court of Appeals adopted the “single publication rule” for defamation cases. Bottom line: once defamatory material is published online, subsequent “hits” or visits to that material do not constitute re-publication and the statute of limitations does not renew. Wisconsin courts had not previously addressed this issue.

Bob Uecker is the radio broadcaster for the Milwaukee Brewers. In June 2006, Mr. Uecker petitioned the Milwaukee County Circuit Court for an injunction against Ann E. Ladd alleging that Ms. Ladd, a self-described “devoted fan,” had continually harassed and stalked him for a period of years.

Mr. Uecker filed an affidavit in support of his allegations. According to Ms. Ladd, Mr. Uecker and/or the Milwaukee Brewers posted his affidavit to a website called thesmokinggun.com, on June 2, 2006. On September 8, 2008 Ms. Ladd filed a complaint alleging, among other things, that Mr. Uecker and the Brewers defamed her by posting the affidavit to that website.

An action to recover damages for a defamatory communication is barred if not commenced within two years after the cause of action accrues. WIS. STAT. § 893.57. (That means: you only have two years to sue, and the clock starts ticking when the defendant made public the allegedly defamatory information.)After a hearing, the circuit court concluded that Ms. Ladd’s claims for any matters occurring before September 7, 2006 were barred by this statute of limitation. She appealed, arguing that her cause of action renewed every time someone accessed the information online.

The Wisconsin Court of Appeals disagreed. Said the court:

We hold that “republishing” the allegedly defamatory information about Ladd on the Internet is not actionable. Accepting as we must on this review that Uecker or the Brewers were responsible for the initial publication to thesmokinggun.com on June 2, 2006, that act is outside the statute of limitations. Uecker and the Brewers have no control over other websites’ use or dissemination of the same information on the World Wide Web. We reject the notion that each “hit” or viewing of the information should be considered a new publication that retriggers the statute of limitations.

This decision brings Wisconsin in line with other jurisdictions that have adopted the single publication rule. The rest of the decision is not particularly ground-breaking, but does serve as a useful outline of Wisconsin law regarding defamation and invasion of privacy, and the various privileges and defenses to such claims.

In the world of sports and entertainment, the celebrity is usually the party claiming to have been defamed – so in that sense this is not a decision about which artists and athletes are likely to be cheering. In today’s online world, however, the decision makes eminent sense.

Copyright in Schools

2010-01-25T10:25:00.000-06:00

I recently noticed the following question, on a legal services website:

I am an educator. We have an oratorical competition for K-3 using poetry. Do I need to get permission for each poem they perform?

Here's how I would respond.

Analyzing a copyright question is rarely simple, and it's always important to obtain legal advice specific to your facts (which this answer is not!)

In general, however, the first step is to ascertain whether the work itself is copyrightable (short phrases, facts and ideas, for example, are not eligible for copyright protection.) Next, if the work is copyrightable, determine whether the term of its copyright has yet expired in the United States. If the work was first published before 1923, it is in the public domain. Later works may also have fallen into the public domain for a variety of reasons, but determining this is rather complicated, and something for which you should definitely consult a copyright lawyer.

If the work is copyrightable and still subject to copyright protection, then either a.) you need a license from the copyright owner, or b.) there needs to be a "statutory exception" making it OK in your case to use the work without a license, or c.) your use needs to qualify as "fair use."

There is a statutory exception for public performance and display rendered in the course of "face to face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction." I cannot advise whether the competition you describe falls under this exception; again, it's something to examine with counsel.

Fair use is also completely fact-specific and requires application of a balancing test that examines four factors and numerous sub-factors. Do not make the mistake of assuming that your use qualifies as fair use just because you are a school. You and your counsel must apply the fair use balancing test.

I recognize this answer does not resolve your issue, but given the fact-intensive nature of this situation, the best advice is for your school district to obtain a definitive opinion from its counsel. If counsel is not comfortable in copyright law, an outside practitioner could be brought in. That might seem like overkill for a K-3 poetry competition, but I suspect the district will find that this is just the tip of the iceburg. Copyright issues are everywhere, especially in schools, and it would be wise for your district to undertake a district-wide examination and to enact reasonable policies in order to provide guidance for staff and students.

Good luck.

Copyright: Registering Multiple Works, Together

2009-11-07T20:22:00.001-06:00

Is it possible to register copyright in more than one work, with a single application and a single fee?

Yes.

But they don’t make it easy. (Seriously. Just try and find what I’m about to tell you, on the Copyright Office website.) And you're probably going to read this post and say, "what??" And maybe that's the point. Simple, single work copyright registrations are things you can learn to do on your own. Registering multiple works together, is more appropriately a project for your copyright attorney. It's really complicated. If you do it yourself and make a mistake, your registration is vulnerable to being invalidated in a dispute. And that would be bad. So read on, if only to realize this is something you shouldn't be doing yourself.

There are three ways to register multiple works, together. And words make a big difference, so set your regular vocabulary aside, and understand that when we use certain words in this context (namely, the words “group” and “collection”) they have very specific meanings.

GROUP registration

Copyright law requires that GROUP registration be permitted for works by the same author all first published as contributions to periodicals.
Copyright law permits the Register of Copyrights to specify by regulation other types of works that are eligible for GROUP registration.
The Register of Copyright has specified by regulation that the following types of works are eligible for GROUP registration:

i. Automated databases

ii. Related serials

iii. Daily newspapers

iv. Daily newsletters

v. Published photographs

So what does all this mean? If the works you’re trying to register together are not of the types (listed above) that are specifically (either by law or regulation) eligible for GROUP registration: GROUP registration is not an option for you.
If GROUP registration is an option for you:

i. Make sure your lawyer is reading the regulations really carefully because the GROUP registration requirements for each type of work are not set out on the Copyright Office website, and they’re all different.

ii. You can’t register online. GROUP registration applications have to be made on paper.

1. Go to the “Forms” tab at www.copyright.gov and then scroll to “Group Registration Forms”

SINGLE WORK registration

There are two ways you can register multiple works together, as a SINGLE WORK
If the works you are registering have been published, you may register together those that were first published in a SINGLE UNIT OF PUBLICATION.
If the works you are registering are unpublished, you might be able to register them together as a COLLECTION.
These types of registrations can be accomplished online.
But again, there are a lot of very specific requirements that you’re not going to find on the Copyright Office website, so this is an issue where you’re best advised to seek advice from a copyright attorney.

It’s really important to understand what “publication” means in this context. If you need a refresher, check my blog post: http://artslawyer.blogspot.com/search/label/publication

Applying For Tax Exempt Status: Higher (and Lower) Fees in 2010

2009-09-17T16:07:00.000-05:00

Here's a tip for nonprofits planning to apply for tax exempt status: get it in gear and apply in 2009, before the fees go up.

As the IRS advises (see explanation, below), an online application system to be known as Cyber Assistant is on the horizon. Once it's launched, the application fees will change again and there will be a reduced fee for organizations applying via Cyber Assistant, regardless of size.

Don't just wait for Cyber Assistant, though, in order to save money. Remember that you face additional hurdles if you apply more than 27 months after the end of the month in which your organization was legally formed.

From the IRS website:

EO Exemption Application User Fees to Increase in 2010

User fees will increase for all applications for exemption (Forms 1023, 1024, and 1028) postmarked after January 3, 2010:

• $400 for organizations whose gross receipts are $10,000 or less annually over a 4-year period
• $850 for organizations whose gross receipts exceed $10,000 annually over a 4-year period
• $3,000 for group exemption letters.

A complete schedule of all user fees will be published in the annual procedure released in January 2010.

Cyber Assistant, a Web-based software program designed to help 501(c)(3) applicants prepare a complete and accurate Form 1023 application, will become available during 2010. Once the IRS announces the availability of Cyber Assistant, the user fees will change again:

• $200 for organizations using Cyber Assistant (regardless of size) to prepare their Form 1023
• $850 for all other organizations not using Cyber Assistant (regardless of size) to prepare their Form 1023.

IRS will announce when Cyber Assistant is available and the effective date of the user fee change. Subscribe to the EO Update to automatically receive an alert that Cyber Assistant is available.

This post is not legal advice. Consult your own attorney.
Copyright 2009 Elizabeth T Russell

Eight Tips For Website Owners

2009-09-16T13:43:00.004-05:00

1. Make sure your domain isn’t somebody else’s trademark. People often think that being the first to register a particular word (or combination of words) as a domain confers unlimited rights to use those words. Not true. If your domain happens to be another company’s trademark (or is confusingly similar to another company’s trademark), that company could force you to cease your use. For this reason, it’s important to “vet” your proposed domain name with a trademark attorney, early on.

2. Use your trademark appropriately on your website. Once you’ve cleared and protected your own trademark, make sure you depict it correctly on your website. This really matters! Using your trademark inappropriately (e.g., using it as a noun instead of an adjective, or using incorrect markings) could cause you to lose your trademark protection. If you maintain the site yourself, make sure you understand the usage rules. If you have staff or contractors maintaining the site, make sure they’re properly trained.

3. Don’t commit copyright infringement. One of your biggest risks for web-related liability is failing to clear licenses for the content on your site. Think about the text, images, music, video, maps…pretty much everything on the site. If you or your employee did not create this material, you almost certainly need licenses. Do not underestimate the importance of obtaining them. Statutory damages for copyright infringement can reach as high as $150,000 per infringement.

4. Understand what contractors own – and what you may not. If your employee created copyrightable material in the course of his/her employment, you own the copyright. The same is not true for material created by contractors, even though you specifically paid the contractor to create the material. Make sure you have properly drafted contracts with your contractors, before they create any copyrightable material for you.

5. Don’t be held liable when others commit copyright infringement. Does your site have a chat room…a forum…a blog? Do you provide others with email accounts or ecommerce opportunities? If your website permits third parties to post material (commonly referred to as “User Generated Content” or “UGC”) and it turns out the UGC is infringing, you’re just as liable for copyright infringement as the user who posted the material. Fortunately, there are steps you can take to protect yourself. The Digital Millennium Copyright Act (DMCA) offers procedures that can provide “safe harbor” in these situations. Consult with your attorney to make sure you comply fully with the DMCA’s requirements Follow the procedures properly, and you may be eligible for safe harbor. Fail to do so, and you’re a potential defendant.

6. Make sure your Terms of Use Agreement is likely to be enforceable. How extensive your Terms of Use Agreement needs to be, depends on what you do with your website. If the site is purely informational, the TOU can be brief. If you engage in ecommerce or provide opportunities for UGC, the TOU should be substantially more detailed. Either way, though, the TOU is a contract between you and the users of your website. And a contract does you no good if it’s not enforceable. Don’t make the mistake of copying a TOU from somebody else’s website and using it as your own. (For one thing, that’s copyright infringement!) It’s not just the words that matter; it’s how the language of the TOU correlates to what you actually do on the site and how you interact with your users. Work with your attorney to make sure your TOU will work for you when you need it.

7. Don’t fall into privacy traps. Trap: If you collect personally identifying information from website users under the age of 13, you must adopt policies and procedures that comply with the federal Children’s Online Privacy Protection Act. Some states also have statutes that regulate online privacy. Trap: You are bound by all representations you make in your privacy policies. Often, carelessly drafted policies make representations that are difficult, if not impossible, to uphold. One very common error is stating, “We will never share your information with anyone, ever.”

8. Be afraid of online contests. Never sponsor an online contest without first consulting your attorney. And be prepared for the attorney to tell you things you don’t want to hear. Online contests create a minefield of potential liability. Doing it right is going to mean a substantial investment of time and resources.

This post is not legal advice. Consult your own attorney.
Copyright 2009 Elizabeth T Russell

Copyright Office Fees Change on August 1

2009-07-31T12:36:00.001-05:00

Many Copyright Office fees will be changing on August 1, 2009.

The fee for online registration of a basic claim through the electronic Copyright Office remains the same at $35.

Registration of a basic claim on Form CO will now be $50, while registration of a basic claim on paper forms will be $65.

A complete fee schedule and further information appears here.

Copyright: The Importance of "Publication"

2009-07-30T15:21:00.024-05:00

Most people understand that registration with the Copyright Office is not required in order to “obtain” a copyright. Copyright vests automatically, the moment you fix copyrightable material in a “tangible medium of expression.” Still, there are several important reasons for choosing to register your work:

A registration creates a public record of your copyright claim in the work.
You cannot file an infringement suit in court unless you have registered the work.
If you register within five years of the work’s first “publication,” the registration constitutes prima facie evidence, in court, of the validity of your copyright and the facts stated in your certificate. (Prima facie means you don’t have to submit any other evidence to prove the point, unless the other side shows you’re wrong.)
If you register within three months after the work’s first “publication,” you can be eligible for statutory damages and attorney fees in an infringement suit
Registration allows you to record your copyright with the United States Customs Service, to protect against the importation of infringing copies of your work. (For more information about this issue, click here.)

So registration is important. If you don't understand the concept of "publication," however, you can compromise the effectiveness -- and maybe even the validity -- of your copyright registration.

What do you think “publication” means? Most people think literally, believing it refers to traditional print publication – as in a book or a magazine, or online. They figure, if the work didn’t appear in one of those media, it was never “published.”

Not so.

Section 101 of the Copyright Law (17 USC §101) is the “definitions” section of the code. Here’s how section 101 defines the term, “publication” (the emphasis is mine):

“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

Section 101 also defines copies and phonorecords:

“Copies” are material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.
“Phonorecords” are material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “phonorecords” includes the material object in which the sounds are first fixed.

So basically it comes down to this. Your copyrightable work is embodied in a material object (e.g., a canvas; a piece of paper). If that material object (and/or additional "copies" of work) changes hands: your work has been "published." If you simply display or perform your work but material copies of it do not change hands, your work has not been published.

Here are some additional reasons why it's important to understand about "publication."

A work’s status as “published” or “unpublished” can affect the court’s analysis in determining whether another person’s use of your work was or was not “fair use."
“Published” or “unpublished” is the determining factor in certain cases involving library exemptions and protection for authors of other nationalities; it also affects whether you need to deposit your work with the Library of Congress.
Certain types of "collection" registrations (i.e., registering multiple works with a single application and a single fee) are available for published works; other types -- with different rules -- are available for unpublished works. If you don't know the difference, you might end up with an invalid registration.

Facebook Danger For Trademark Owners

2009-06-11T11:35:00.011-05:00

Trademark owners: take action immediately, to prevent others from registering your mark as a Facebook username.

As of 12:01am EDT on Saturday, June 13, 2009, Facebook users will be able to select usernames for their accounts (for example: brussell instead of Beth Russell). Information about the new policy appears on Facebook's blog.

What if your trademark is Nike and my teenage son (or, worse, a competitor like Reebok) registers Nike as a Facebook username? Without arguing the legal merits as to whether this is or is not actionable (and depending on the facts, there are good arguments on both sides of the issue) -- the reality is you're going to be embroiled in some kind of a dispute, quickly. And as soon as that happens -- whether you're legally right or wrong -- you lose. You lose time and money and, possibly, valuable goodwill in your mark.

There are steps you can take to prevent this.

Facebook has a form specifically for trademark owners who wish to prevent the registration of their marks as Facebook usernames. Note: the form requires a registration number, which suggests that Facebook may only be extending protection to the unauthorized use of Federally registered marks. (Yet another good reason to pursue Federal registration!) It's unclear whether that is their official policy; their FAQs do not address the issue.

However. In the event someone registers your mark as a username and you claim state or use-based "common law" rights but you do not hold a Federal registration, consider using Facebook's "Notice of Intellectual Property Infringement (Non-Copyright)" Form.

If you would like information about pursuing Federal trademark registration, please contact Russell Law.

Understanding Lawyers

2009-05-23T11:38:00.003-05:00

The key to any good relationship is understanding where the other person is coming from: what realities does the other person have to face, that you might not have thought about?

Russell Law has posted an essay on what might seem like an impossible task, but it's worth a shot: Understanding Lawyers.

Landesman NEA Nomination

2009-05-18T08:55:00.005-05:00

Last week, President Obama nominated Broadway producer Rocco Landesman to serve as the next Chairman of the National Endowment for the Arts.

Coverage of the nomination appears here:

Los Angeles Times May 13

Los Angeles Times May 14

Washington Post May 13

New York Times May 12

Mr. Landesman has outspokenly addressed the tension between for-profit and non-profit business models in the arts. (See, Landesman, Broadway: Devil or Angel for Nonprofit Theater? New York Times June 4, 2000). This discussion is absolutely central to the future health and vibrancy of the arts in America, and I hope it will occupy a prominent place on Mr. Landesman's agenda as Chairman.

Artistic businesses are just that: businesses. Their proprietors must observe business plans, know the law, balance budgets and earn profits just like other businesses. In my view, the best investment the NEA can make in our nation's cultural heritage is to undertake a sustainable, nationwide system for delivering the business and legal skills that artists and arts organizations need to thrive independently.

I have a feeling Rocco Landesman's the man for the job.

Google Book Settlement Deadline Extended

2009-04-29T09:29:00.008-05:00

Authors and publishers now have until September 4, 2009 to decide whether to stay in or opt out of the class action lawsuit settlement involving Google's Book Search service. The previous deadline had been May 5.

CNET NEWS reports that Judge Denny Chin of the U.S. District Court for the Southern District of New York issued the extension order yesterday in response to a request by several authors. Google had asked for an extension of only 60 days.

No other deadlines in the settlement agreement are affected by this order, though the Final Fairness Hearing originally scheduled for June 11, 2009 will now be held on October 7, 2009.

The New York Times reports that the Justice Department has opened an antitrust inquiry regarding the terms of the settlement.

Copyright: Consultant Training Materials

2009-03-24T18:48:00.015-05:00

Consultants: there's been a decision you should know about, if part of your business involves the distribution of training materials.

Situation Management Systems, Inc. v. ASP Consulting LLC was decided by the First Circuit Court of Appeals on March 19, 2009. The decision has implications far beyond the dispute of the parties; it affects the copyright expectations of the more than $100 billion management training industry in the United States. Bottom line: this decision supports consultants seeking to protect their training materials under US Copyright Law.

Here's what happened.

Situation Management Systems (SMS) provided consulting services aimed at improving employee communication and negotiation skills in the workplace. As part of its services, SMS developed a series of training materials.

Three SMS employees left the company, founded their own consulting company (ASP) and developed...hmm...strikingly similar training materials.

SMS sued ASP for copyright infringement.

The trial court (the "district" court) found that ASP had copied SMS' materials. The district court determined, however, that there was no copyright infringement because the SMS materials were not copyrightable in the first place.

Let's pause for a basic concept. Material doesn't qualify for copyright protection unless it is sufficiently "original." In this context, "originality" means that the author created the material independently, and that the material possesses at least some minimal degree of creativity. By way of example: the white pages of the phone book are not sufficiently original because there's no creativity in listing people's names in alphabetical order next to their phone numbers. But the yellow pages are sufficiently original because someone had to exercise at least a little judgment in laying out the ads and determining how the pages would look. The originality threshhold is "not particularly rigorous," but it does exist.

Back to the SMS case.

The district court said SMS' training materials did not satisfy the originality requirement because they were filled with "generalizations, platitudes, and observations of the obvious," that they contain "not-so-stunning revelations" and teach "[a]t their creative zenith...common-sense communication skills."

The First Circuit said the district court was wrong, because its analysis was "obviously tainted by its own subjective assessment of the works' creative worth" -- which has nothing to do with the legal test for originality.

The First Circuit found that the SMS materials "easily" satisfied the test for originality because they contained text, flowcharts and illustrations explaining techniques for communication and negotiation. The First Circuit also noted that, while processes and systems themselves are not eligible for copyright protection, a description of a process or system can be copyrightable.

So in this case, the SMS materials were found to be copyrightable.

Consultants: register your training materials with the Copyright Office.

Authors and Publishers: Google Book Settlement Deadlines Are Approaching

2009-03-10T16:26:00.002-05:00

If you are a book author, book publisher or any other person who owns a copyright in a “Book” or an “Insert,” a class action settlement regarding Google’s practice of scanning and displaying in-copyright works might affect your rights.

Advertisements advising authors and publishers of their rights have been widely distributed, but (in my opinion) the ads look too much like…well…the ads from sleazy-ish personal injury law firms trolling for business. In short, they look like something you’re likely to ignore.

Don’t.

If you haven’t heard about the Google Book Settlement, visit the settlement website and get up to speed. Do this sooner rather than later, as important deadlines are approaching.

Here’s a quick summary about what has happened.

Google scanned in-copyright books and displayed excerpts from them as part of its Google Book Search service. Google did this without permission of the copyright owners, in the belief that its actions qualified as fair use. The copyright owners (authors and publishers) sued for copyright infringement.

Two years of negotiations followed, until October 2008 when the parties announced a settlement agreement. Because the lawsuit was a “class action” lawsuit, the proposed settlement affects all members of the class: authors and publishers of “Books” or “Inserts” that were published or distributed in hard copy format on or before January 5, 2009, and which have been registered with the US Copyright Office.

It’s very likely that if you are a book author or publisher, you are a member of the class.

The settlement terms have to be approved by the court, and a hearing for that purpose has been set for June 11, 2009. However: two important deadlines come before then, on May 5, 2009.

If you want to comment or object to the settlement, you must do so by May 5, 2009.
If you want to opt out entirely, and preserve your right to sue Google individually, you must do so by May 5, 2009.
If you qualify for a cash payment, you must file a claim by January 5, 2010.

This is a very big deal. Learn all you can, understand that you have decisions to make, and help spread the word to other authors and publishers.

Copyright: The Statutory Exceptions

2009-02-22T14:42:00.024-06:00

Basic rule: you can't use somebody else's copyrighted material without a license.

There are plenty of exceptions to the rule, many of which appear in the law itself. Here's a rundown of some of these "statutory exceptions."

Public domain. Copyright doesn't last forever. Once the term of copyright has expired, material passes into the "public domain" and is free to use. Calculating the term of copyright protection for a particular work can be very complicated and you should always consult an attorney. For a basic explanation, though, check out this Digital Slider provided by the American Library Association's Copyright Advisory Network.

Performance exception for face-to-face teaching. Just because you're using material for an educational purpose doesn't mean you don't need any licenses. There is, however, an exception for certain performances made in the course of face-to-face teaching at a nonprofit educational institution. Check section 110 of the US Copyright Law.

Reproduction by libraries and archives. Section 108 of the Copyright Law provides a number of exceptions for libraries and archives. Again, the ALA's Copyright Advisory Network has a tool to help explain these exceptions, in its Section 108 Spinner.

Reproduction for the blind and disabled. Exceptions appear in Section 121.

Public broadcasting exceptions. See Section 118.

The architectural exception. Although architectural works are protected by copyright, it is permissible to make a pictorial representation of an architectural work that has been constructed, if the building is ordinarily visible from a public place. See Section 120.

Works of the US government. Section 105 says that copyright protection is not available for works of the US government. (As I've blogged previously, though, you still need to be careful when using "government" works.)

"First sale" exceptions. Just because you own the physical media in which copyrighted material is embodied doesn't mean you own the bundle of copyright rights for that material. For example: if you purchased the painting, you own a piece of canvas. You do not own or control any of the copyright rights that go along with the expression that appears on that canvas. Still, there are a few things you can do with that canvas, without having to ask permission from the copyright owner. These things are called "first sale" exceptions, and they appear in Section 109. (Wondering what these exceptions are? Basically, you can sell or publicly display the item without a license. It's more complicated, of course, but that's essentially it.)

Songwriters: February Is Album Writing Month

2009-01-28T16:55:00.004-06:00

Attention songwriters: February is Album Writing Month.

Do you know about FAWM.ORG?

From their website:

Have you written 14 songs in 28 days? What are you waiting for... inspiration?

"You can't wait for inspiration. You have to go after it with a club." — Jack London

This is the club.

Each February, FAWM.ORG forges a collaborative community where thousands of musicians of all walks and skill levels write an album's worth of material in the shortest month of the year. That's roughly one tune every other day. "Fawmers" are a mix of music professionals, students, homemakers, and folks who work dayjobs but rock nightclubs.

Check out the FAWMERS near you...and get to work!

Bringing A Libel Action

2009-01-27T08:35:00.004-06:00

"Libel" is the written communication of false information about a person (or business) that may cast that person in a negative light. In Wisconsin, prior to bringing a libel action against a newspaper, magazine or periodical you have to supply the would-be defendant with written notice containing very specific information.

WIS. STAT. § 895.05(2) contains five requirements for valid pre-suit notice. It must:
(1) be in writing;
(2) be directed to those alleged to be responsible or liable;
(3) specify the article and statements therein which are claimed to be false and defamatory;
(4) contain a statement of what are claimed to be the true facts; and
(5) be given before any civil action is commenced.

Today, Russell Law blogged about a recent Wisconsin case interpreting this notice requirement, at the Wisconsin Lawyers Blog.

Anyone intending to bring a libel suit in Wisconsin should be aware of this notice requirement, and those in other states should find out whether similar requirements apply.

Using THOMAS To Find CPSIA 2008

2009-01-17T10:46:00.002-06:00

Artists have been inquiring about how they may be affected by H.R. 4040, the bill that became Public Law 110-314, the Consumer Product Safety Improvement Act of 2008 (CPSIA).

The first step (for everyone) is reading the law itself. Accordingly, Russell Law has posted instructions for locating the text of the CPSIA legislation using THOMAS, the Library of Congress' website.

Trademark Owners: .tel Sunrise Period Closes On February 2

2009-01-14T09:18:00.006-06:00

In our post of November 1, 2008 we discussed generic top level domains, or gTLDs (.com, .net, .org, etc.).

A new top level domain is currently being made available: . tel

Unlike other top level domains, which simply direct users to websites that may be hosted anywhere in the world, .tel will store the owner's contact information directly on the associated DNS (domain name server) -- and will return that contact information when a user enters the domain, even if there is no website associated with the domain.

As an example: if you enter the .tel domain of a local business from your mobile phone, you will receive the business' phone number, email address, physical address and even GPS coordinates without having to wade through a website. You'll get that information even if there is no website.

Registering .tel domains is occurring in three phases. The "Sunrise" period, for trademark owners only, closes on February 2, 2009. The "Landrush" period, during which .tel domains will be available for premium prices, extends from February 3 - March 23, 2009. The "General Availability" period begins on March 24.

Prisoners Can't Sue US Government For Copyright Infringement (Contractors Beware!)

2009-01-12T08:48:00.018-06:00

Robert W. was an inmate at the United States Prison Leavenworth. While there, he was assigned to work for Federal Prison Industries, Inc. (FPI), a US government-owned corporation that produces, sells and distributes various products. In the course of his duties for FPI, and using government-furnished computers, Robert W. developed and produced desk-blotter calendars for the years 2000 and 2001-2002.

In 2001, Mr. W. sued the government for infringing his copyright in the calendars. The lawsuit was initially dismissed because he had not registered his copyright with the US Copyright Office. (Remember: registration is a prerequisite to bringing suit [17 USC sec. 411(a)].

Mr. W obtained counsel, registered, and tried again in 2005.

This time, the suit was dismissed (United States Court of Appeals for the Federal Circuit, January 8, 2009) under a provision of law that prohibits copyright suits against the government by certain persons. The statute in question is 28 USC sec. 1498(b), and the provision that ultimately kicked Mr. W out of court states:

this subsection shall not confer a right of action on any copyright owner ...with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used

Mr. W said this statute shouldn't apply to him, since it's been clearly established that prisoners are not "employees" of the US government. The court acknowledged that in other contexts (e.g., the Clean Air Act and the Fair Labor Standards Act), prisoners are not employees. Nonetheless, the court noted, "[i]t does not automatically or necessarily follow, however, that prisoners are not 'employees' under [section] 1498(b) for purposes of suing the United States for copyright infringement." Having raised it, the court then sidestepped that question, finding that whether or not he was an "employee," Mr. W was indisputably in the "service" of the United States.

Mr. W argued that "employment" and "service" mean the exact same thing in this statute, in part because the second clause (after the clause highlighted in red, above) refers to "the employee." The Federal Circuit disagreed, reminding us that, "[w]hen Congress uses different parallel words in the alternative in the same statutory provision, it is reasonable to assume that the words have different meanings."

So the court concluded that Congress intended the two terms ("employment" and "service") to have "different, although related, meanings." Mr. W was clearly in the "service" of the United States; therefore his lawsuit failed.

OK, so not good news for prisoners -- but what effect might this decision have on artists and others who perform work for the United States as contractors?

The intent of this court, clearly, is to limit infringement suits against the government. The door is now wide open for a future holding that prisoners are, in fact, "employees" in the copyright context. As for non-prisoners, this decision drops a one-sentence bomb that similarly leaves the door open for limiting one's right to sue the government for infringement: on page 5 the Federal Circuit states, "[o]ne may have a 'service' relationship with the federal government that does not constitute an 'employment' relationship."

Danger, contractors. Danger.

Arts Enterprise Symposium

2009-01-06T16:25:00.002-06:00

Interested in arts entrepeneurship?

UW-Madison will be hosting an Arts Enterprise Symposium, January 30-February 1, 2009. Registration for the entire event is only $50. Elizabeth Russell will be among the speakers, presenting sessions on contracts and website legal issues.

Copyrighting The Floor Plan: Architectural Works

2008-12-30T11:23:00.004-06:00

Although copyright protects architectural work, protection does not extend to the "individual standard features" of such work such as common windows, doors and other "staple" building components.

US Copyright Law defines an "architectural work" as: the design of a building as embodied in any tangible medium of expression, including a building, architectural plans or drawings. The
work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features. (17 U.S.C. § 101)

So: Individual standard features and architectural elements classifiable as ideas or concepts are not themselves copyrightable. However, an architect’s original combination or arrangement of such elements may be.

In Intervest Construction v. Canterbury Estate Homes (No. 07-12596, December 22, 2008), the 11th Circuit Court of Appeals commented that the definition of an architectural work closely parallels that of a “compilation” under the Copyright Law, that is: “[A] work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”

And copyright protection for compilations is "thin." That means, it's more difficult to prove infringement when your work is a compliation than it is when your work consists of completely original material.

Intervest Construction was a dispute between the copyright owners of certain floor plans for single-family homes. Floor Plan #1 was entitled to copyright protection, but primarily as a compilation. Accordingly, when the owners of Floor Plan #1 complained that Floor Plan #2 infringed, they faced a very high standard of proof. Ultimately, it was a standard they could not achieve, and their infringement claim failed.

Not all copyrights are created equal. If yours is "thin," your burden for establishing infringement against another will be more difficult than if the work in question enjoyed a thicker veil of protection.

School Colors: Use Can Be Trademark Infringement

2008-12-20T12:58:00.001-06:00

The Fifth Circuit has ruled in favor of four universities (Lousiana State University, the University of Oklahoma, Ohio State University and the University of Southern California) against an apparel company that sold t-shirts with the schools’ color schemes and other identifying indicia referencing the games of the schools’ football teams.

Said the court: “We conclude that the colors, content, and context of the offending t-shirts are likely to cause confusion as to their source, sponsorship or affiliation.”

RIAA Lawsuits To End?

2008-12-19T11:13:00.005-06:00

The Wall Street Journal reports today that the recording industry is abandoning its 5-year offensive against those who allegedly download music illegally. The RIAA has sued thousands since commencing its litigation campaign in 2003, and now appears to be admitting that its tactics have done very little to achieve reductions in online piracy.

It appears that the recording industry will be seeking alternative ways to combat illegal filesharing, by "working" with internet service providers. That could be code for: making sure the ISPs restrict service to those allegedly engaged in illegal filesharing, else risk being sued themselves. From a public relations point of view, it's much more palatable to hear about an RIAA campaign against corporate internet service providers, than against grandmothers, middle school students and (as occurred in at least one instance) the deceased.

So the anti-piracy landscape is changing. An end to this 5-year reign of terror is of course a positive development. Whether the next phase represents a reasonable approach to enforcement of the industry's copyright rights, however, remains to be seen.

Others sure to be following this development are Ray Beckerman at Recording Industry vs. The People , P2PNET.net and Techdirt.

Copyright: Using Work Of The US Government

2008-12-02T09:29:00.002-06:00

Section 105 of the US Copyright Act (17 USC §105) states:

Copyright protection…is not available for any work of the United States Government….

We read that first sentence and think, “Home free! We can use anything that belongs to the Government!” Then we read the second sentence:

…but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

Then we think, “Well, shoot. How are we supposed to know if something is a work “of” the Government, or if it’s something the Government “received?”

If you’re short on time and don’t want to read on, here’s the quick answer: “Ask.”

Here’s the longer answer.

It’s a work “of” the Government if a Government official or employee created the work as part of his or her official duties. (We know this, because section 101 of the Copyright Act [17 USC §101] states: A “work of the United States Government” is a work prepared by an officer or employee of the United States Government as part of that person's official duties.) Such work is, by virtue of section 105, in the public domain and free to use.

But what if the Government employee created the work after hours?

The law itself doesn’t address this, but Congressional notes to the statute do shed some light. The notes state: “…a Governmental official or employee would not be prevented from securing copyright in a work written at that person’s own volition and outside his or her duties, even though the subject matter involves the Government work or professional field of the official or employee.”

So let’s say, for example, an off-duty Secret Service agent sketches caricatures of the First Family and posts the sketches on a website. Aside from the fact she’d be fired…are the sketches public domain because the agent is a Government employee? No. The agent is entitled to the full protections of US Copyright law -- even though the subject matter involved her line of work -- because (presumably) she made the sketches on her own time and was not required to do so as a part of her official duties.

Next example: The US Postal Service.

Don’t let the name fool you: the US Postal Service is not, actually, the “Government.” The US Postal Service is an “independent establishment of the executive branch of the Government of the United States” (39 USC §201).

Huh?

Oh, maybe this would be clearer; it’s paraphrased from a court decision: “Congress’ purpose in establishing the US Postal Service was to permit the Service to operate in a ‘business-like’ fashion; to such end, Congress removed the Service from the political sphere and authorized it to act as an independent establishment with powers equivalent to a private business enterprise, such as the power to make contracts, keep accounts and to acquire and lease property.”

Huh?

OK, here’s the bottom line. US postage stamps are copyrightable.

The Congressional notes to section 105 state: “In accordance with the Postal Reorganization Act of 1970…[section 105] does not apply to works created by employees of the United States Postal Service. In addition to enforcing the criminal statutes proscribing the forgery or counterfeiting of postage stamps, the Postal Service could, if it chooses, use the copyright law to prevent the reproduction of postage stamp designs for private or commercial non-postal services (for example, in philatelic publications and catalogs, in general advertising, in art reproductions, in textile designs, and so forth.)”

So. If a postage stamp was designed by a Postal Service employee, it’s subject to copyright because of the Postal Reorganization Act of 1970. If the stamp was designed by an independent artist, the artist almost certainly “assigned” his or her copyright to the Service; and if not, the artist retained his or her copyright. Either way: the stamp is not in the public domain.

The United States Postal Service has an extensive licensing arm to control the use of USPS intellectual property. Do generally accepted standards of fair use apply? Yes. But take note: the USPS’ view of fair use is not expansive.

A Tax Change For Single-Member LLCs

2008-11-26T13:56:00.003-06:00

This may not seem like "art" news, but many of our readers are artists (as well as non-artists) doing business as single-member limited liability companies.

For federal tax purposes, an LLC with one owner is referred to as an entity that is not separate from its owner (a “disregarded entity”) unless an election is made for it to be treated as a corporation.

An upcoming change affects how single-member LLCs will be required to pay employment taxes.

For wages paid before Jan. 1, 2009, disregarded entities choose how they want to file and pay their employment taxes: they may use either the name and EIN (Employer Identification Number) assigned to the LLC or the name and EIN of the single member owner.

For wages paid on or after January 1, 2009, employment taxes must be reported and paid in the name and EIN of the LLC.

For more information: Disregarded Entities for Purposes of Employment Tax

And of course this blog does not constitute legal or tax advice, so please consult your tax professional.

Work Made For Hire (May Not Be)

2008-11-13T09:23:00.007-06:00

Twice this week I've heard lawyers proclaim in public that you don't own the copyright to your work anymore, if you've signed a "work made for hire" agreement.

That's not necessarily so.

The general rule is: if you create copyrightable material, you are called the "author" of that material and you own the copyright.
That general rule doesn't apply if you created the material as "work made for hire" (WMFH).
If the work truly is WMFH, the employer or commissioning party is considered the author of the work and owns the copyright. It's like you never existed.
However: there are only two scenarios under which your work can be WMFH: a.) if you created the work in the course of your employment; or b.) if you were commissioned to create the work by a third party AND there was a written WMFH agreement in place before you created the work AND the work itself falls into one of nine statutory categories.
The nine categories are: i.) contribution to a collective work; ii.) part of a motion picture or other audiovisual work; iii.) a translation; iv.) a supplementary work; v.) a compilation; vi.) an instructional text; vii.) a test; viii.) answer material for a test; or ix.) an atlas.
If commissioned work doesn't fall into one of the nine categories, it's not WMFH, no matter the contract says.
If the parties really intend for commissioned work to be WMFH, and the work doesn't fall into one of the nine categories, the only way to transfer copyright to the commissioning party is with a properly drafted assignment agreement.

Whether you are the creator or the commissioning party, Russell Law can help you draft agreements to effect your true intentions.

The Good Ole Days Of ".com" Are Fading Fast

2008-11-01T09:12:00.014-05:00

You're starting a business and (after conducting a thorough trademark search) have settled on a Very Clever Name. You log in to your favorite domain registry and snap up VeryCleverName.com. Your budget is limited, but you know it's good practice to build as extensive a domain portfolio as possible, so you also purchase variations of VeryCleverName .org, .info., .biz and maybe even .tv.

Those extenders (.com, .org, etc.) are called generic top level domains, or gTLDs. They exist and are administered by ICANN, the Internet Corporation for Assigned Names and Numbers. (ICANN basically rules the internet and, in that respect, rather resembles the Starfleet Federation.)

In its 10-year existence, ICANN has approved 21 gTLDs. Shortly, that number will increase from 21 to...infinity.

ICANN is developing a system that will permit individual applicants to obtain customized gTLDs. Currently, all gTLDs are in Roman characters that resemble English; ICANN notes that "non-English speakers will have the opportunity to express the whole of a domain name in characters that look like their language."

ICANN estimates that applying for one's own gTLD will cost approximately $185,000.

A world with unlimited gTLDs will have enormously complex implications for trademark owners and small businesses. ICANN is accepting comments on the proposed new system until December 8, 2008.

Google Settlement To Establish Book Rights Registry

2008-10-28T15:55:00.012-05:00

The Author's Guild and the American Association of Publishers today settled a class action lawsuit against Google. The suit, filed in September 2005, stemmed from Google's plan to digitize and display portions of in-copyright books.

Settlement terms are still subject to approval by the U.S. District Court for the Southern District of New York. If approved, however, the settlement provides that Google will establish a not-for-profit "Book Rights Registry." Says Google, "Holders worldwide of U.S. copyrights can register their works with the Book Rights Registry and receive compensation from institutional subscriptions, book sales, ad revenues and other possible revenue models, as well as a cash payment if their works have already been digitized."

Is the not-for-profit Book Rights Registry a model to be considered in the registration of (non)orphan works? We (Art Law For Everyone) need to blog more thoroughly about orphan works, and will do so in the coming weeks. (We're preparing for a presentation on the issue and want to wait on the blog until our study is as informed as possible.)

One of artists' very reasonable objections to orphan works legislation, however, is that corporate content users like Google will control private registries and make "making yourself known" financially difficult for copyright owners.

With today's news, let's ask: "If Google can create a not-for-profit Books Registry, why can't they/we create a similar registry for copyright owners generally, and more particularly for the creators of visual art?"

The answer is: "It's possible."

Before we conclude, "But it won't happen," let's keep talking. It's up to all of us to maintain the constitutional balance and find a workable solution to the orphan works issue.

For additional discussion about the Google settlement: THR, Esq.; EFF; Mercury News (Chris O'Brien)

Copyright: A New Resource for Musicians

2008-10-28T09:20:00.003-05:00

Public Knowledge has announced a new website dedicated to copyright issues as they affect musicians.

The site, NYMusicCopyright.org, features an introduction to copyright along with information about music licensing, sampling, distribution, net neutrality, remedies, P2P technologies, the DMCA, orphan works and more.

The site is funded by the New York State Music Fund, which was established by the New York State Attorney General after settling "payola" issues with major recording and broadcasting companies. Terms of the settlements required that settlement funds be used to benefit the residents of New York State with music education and appreciation programs.

Mind Your Metatags

2008-10-26T17:01:00.007-05:00

Recently, both Legal Literacy and Wisconsin Business Law and Litigation have blogged about the dangers of including another's trademark in your website's metatags. (If you're unfamiliar with metatags and want to see some for yourself, click on "View" [in the Firefox or Explorer browsers], then "Page Source" or "Source.")

Believing that search engines use metatags to direct web traffic, businesses will sometimes place in their own metatags, the trademarks of a competitor -- hoping that internet searches for the competitor will lead consumers to their site instead. There has been much litigation about whether this practice constitutes trademark infringement.

Most recently, the First Circuit Court of Appeals held that it does. Venture Tape Corp. v. McGills Glass Warehouse, 2008 WL 3959997 (1st Cir. Aug. 28, 2008).

A leading thinker on this issue is Professor Eric Goldman. For years, Goldman has been asserting that search engines actually ignore keyword metatags, and therefore that because metatags are technologically irrelevant they should also be legally irrelevant. Goldman also argues that the practice of including a competitor's trademark in one's metatags does not constitute a "use in commerce," causing the practice to fall short under the test for trademark infringement.

Although Professor Goldman makes some very compelling points, they have been largely ignored by the courts. So -- for better or worse -- there is still a very significant risk associated with the practice of sneaking a competitor's trademarks into your metatags.

Even Goldman agrees: don't do it.

Copyright Office Fees To Increase

2008-10-16T15:57:00.003-05:00

The US Copyright Office has announced that it intends to increase certain fees.

The fee for filing a claim online through the eCO system will remain unchanged at $35.
The fee for filing the barcode form CO will increase from $45 to $50.
The fee for filing paper forms PA, SR, TX, VA and SE will increase from $45 to $65.

Fee increases are expected to take effect by April 1, 2009.

PRO IP and Orphan Works

2008-10-14T15:15:00.016-05:00

Although visual artists have been rallying against the Shawn Bentley Orphan Works Act of 2008 (which has passed only the Senate), they seem largely to have ignored the PRO IP Act. And yesterday, PRO IP became law.

Yesterday, President Bush signed S. 3325, the "Prioritizing Resources and Organization for Intellectual Property (PRO IP) Act of 2008," which amends civil and criminal intellectual property laws; establishes the position of an Intellectual Property Enforcement Coordinator in the Executive Office of the President; and authorizes Justice Department grants to assist in addressing intellectual property theft and infringement crimes.

Yes, PRO IP creates a new "Czar" position. Just what we needed. (Not).

Backed by the recording and motion picture industries, PRO IP strengthens civil and criminal laws against piracy and counterfeiting. Not that piracy and counterfeiting aren't legitmate problems to be addressed. They are. But adequate and appropriate remedies already existed. PRO IP simply gives corporate bullies a bigger stick.

Meanwhile, artists continue to oppose orphan works legislation that might actually restore some of the balance that the US Consitution's copyright clause prescribes.

Russell Law agrees with attorneys Gigi Sohn and Joy Butler regarding the need for orphan works legislation and the extent to which frenzied opposition has at times reflected inaccurate readings of the orphan works bills.

Almost no one, for example, has noticed that the Shawn Bentley Orphan Works Act would require the Register of Copyrights to conduct a study on remedies for copyright small claims, "including consideration of alternative means of resolving disputes currently heard in the United States district courts."

How many individual artists actually enforce their copyrights? Not many -- because they can't afford federal court litigation. In our view, progress toward the establishment of a small claims procedure would be an enormous boon for individual artists.

Copyright is supposed to be a balance between the rights of the author and the rights of the public. PRO IP skews that balance; it continues the trend in this country toward the perpetual, exclusive control of copyrightable material by content owners. Orphan works legislation more reasonably reflects the constitutional balance.

Artists opposing orphan works legislation see themselves as potential victims. We respectfully suggest, however, that that position is not terribly different from the corporate content owners who pushed PRO IP. The one-sided objective, in both cases, seems to be tipping the copyright balance as far in their favor as possible, public be damned.

And like it or not, that's contrary to what the constitution demands.

At Russell Law we advocate for artists. We work with artists; we work for artists. That's why we have to speak frankly. To the extent there are flaws with the orphan works bills -- and there are -- artists are more likley to be heard if the conversation reflects their sincere understanding and acceptance of the constitutional balance.

For Emerging Artists: Your Legal Advisors

2008-10-10T13:00:00.003-05:00

Russell Law has posted an essay for emerging artists entitled, Your Legal Advisors.

Bottom line: if you're a hobbyist, enjoy. But if you're going to be a professional, you've got to treat your business as a business.

It's Not Over Until (the estate of) Maria Callas Sings

2008-10-10T09:46:00.007-05:00

Maria Callas (described by Linda Ronstadt as "the greatest chick singer ever") died on September 16, 1977.

Who gets to use her name, now that she's deceased?

According to the US Trademark Office: anyone.

The Trademark Office found, at least, that there is "significant doubt" as to whether there is a successor in interest to Maria Callas’ rights in her name or persona. Accordingly, an Italian company is being permitted to register MARIA CALLAS as a trademark for its line of jewelry.

You can't register a US trademark if it "[c]onsists of or comprises...matter which may disparage or falsely suggest a connection with persons, living or dead...." (15 USC 1052[a]). Caselaw establishes, however, that this only serves as a bar to registration if there is someone or some entity (such as an heir or an estate) who still holds rights to the name of the individual in question.

It's hard to prove a negative. But in this case, the Italian company convinced the Trademark Trial and Appeal Board (TTAB) that there is no apparent successor to Maria Callas’ rights in her name or persona. That company, therefore, is free to pursue its MARIA CALLAS application for jewelry. In re MC MC S.r.l, Application No. 79022561 (September 26, 2008). If heirs or an estate emerge and wish to challenge the registration, they'll be able to do so in an opposition or cancellation proceeding before the TTAB.

But until that happens: it's open season on "Maria Callas."

Now. Please keep in mind, this is only for trademark purposes. There could be other legal theories an heir or estate could advance against using a deceased celebrity's name. (Note, we're now talking in generalities and not specifically about Maria Callas. Why? Because Maria Callas was born in New York, lived all over the world and died in Paris. We have no idea what law would control in her case.)

In the United States, most states have versions of right of publicity and/or right of privacy laws. Rights of publicity protect people whose identities have commercial value (i.e., celebrities) from the financial loss that occurs when someone uses their name or likeness without first obtaining a release. Although the First Amendment does permit the depiction of a famous person for purposes of artistic expression, you can’t ride the wave of somebody’s fame, for free.

There are many different rights of privacy; too many to describe here. In extremely general terms, however, they protect an individual's right to restrict the public disclosure of personal or embarrassing information.

There’s a big difference between the right of publicity – which is considered a “property” right – and the various rights of privacy – which are “personal” rights. The difference is this: a property right can be passed to one’s heirs, but a personal right is extinguished at death. In some states, therefore, the heirs can enforce a celebrity’s right of publicity even after the celebrity has passed away. Not so, with rights of privacy. There is no “post-mortem” right to privacy.

Back to Maria Callas. Did she leave heirs or an estate? Is her identity subject to a post-mortem right of publicity?

If so, this might not be over.

In the meantime, is your estate plan in order? Contact Russell Law for a consultation.

Collaborate Carefully

2008-10-07T10:30:00.008-05:00

Business is all about collaboration. Whether your business is a rock band or a marketing firm or a grocery chain: you collaborate with others. Often, you do so "on a handshake" without a written collaboration agreement.

We respectfully suggest that not reducing your agreement to writing can be detrimental to the financial health of your business and, possibly, to your own personal finances.

Reason #1: Accidental Parnerships. In most states, forming a legal partnership does not require any formalities. The partnership is, simply, "an association of two or more persons to carry on as co-owners a business for profit." The partnership exists, automatically, by virtue of your actions. And once it exists, all partners are individually liable for all the debt, obligations and liabilities of the partnership. That is rarely a situation business collaborators would voluntarily choose, yet it's one they very often -- unknowingly -- create. A well-written collaboration agreement could avoid this result.

Reason #2: Employee vs. Contractor. Most collaborators seek to establish themselves as contractors rather than employees. You aren’t necessarily an “independent contractor,” though, just because you say so. Again, actions (far more than words) will ultimately determine whether or not the “independent” designation is justified.

Another fly in this ointment is that the criteria differ, for different purposes. For example, to be considered a contractor for purposes of Wisconsin Workers Compensation, you must satisfy one list of criteria (http://www.dwd.state.wi.us/wc/employers/independent_contractors.htm). To be considered a contractor for purposes of Wisconsin Unemployment Insurance there's another list (http://www.dwd.state.wi.us/ui201/pdf0105/t2201.pdf) and for federal tax purposes there's a completely different set of criteria: (http://www.irs.gov/businesses/small/article/0,,id=99921,00.html).

A well-drafted collaboration agreement won't just say "I'm a contractor." It will include specific provisions to ensure these various criteria are satisfied.

Two Harry Potter Cases

2008-09-30T09:12:00.013-05:00

By now most have heard about the September 8, 2008 decision in Warner Bros. Entertainment Inc. and J.K. Rowling v. RDR Books and Does 1-10 (--- F.Supp.2d ----, 2008 WL 4126736 S.D.N.Y.,2008). The defendant, RDR Books, intended to publish The Lexicon, a reference book for fans of the Harry Potter book series. The Lexicon was written by Steven Vander Ark, a fan of the Potter series and a former library media specialist from Michigan.

Warner and Rowling sued RDR for copyright infringement, and won when Judge Robert Patterson rejected the defendants' proffered defense of fair use.

Reaching a determination on fair use requires the court to apply a four-factor balancing test to the facts of the case. This blog is not the place for a lecture on the four factors; suffice to say they can be recalled with the acronym PNAM: Purpose and character of the use; Nature of the underlying work; Amount used; and Market effect on the underlying work.

As Judge Patterson observed in his decision, "The evaluation of [the four] factors is 'an open-ended and context-sensitive inquiry'...[and they] may not 'be treated in isolation, one from another'; instead they all must 'be explored, and the results weighed together, in light of the purposes of copyright."

Translation: Relying on fair use is a crap shoot.

Well, not really. But courts have a tremendous amount of discretion in weighing and balancing the four factors, and predicting any outcome with certainty is difficult if not impossible.

RDR and Mr. Vander Ark failed to convince that the factors should tip in favor of fair use. The blog associated with Harvard's Citizen Media Law Project outlines how the court balanced the factors in this case.

The CMLP blog also suggests, however, that the court's decision expressly leaves room for successful fair use claims by the authors of literary reference guides. It will be interesting to see if the Second Circuit Court of Appeals agrees, if RDR chooses to appeal. Authors and fair use proponents will do well to keep this case on their watch lists.

(Related note: Authors and other fair use proponents may be interested in the Right to Write Foundation, an organization involved in RDR's defense.)

Meanwhile, in other Harry Potter news: Warner Brothers just lost a case in India in which they attempted to prevent the release of a movie entitled, Hari Puttar, the story of a 10-year-old boy who must guard his father's top secret computer chip from incompetent burglars while his parents are away.

Hari Puttar opens in India Friday.

Action on the Shawn Bentley Orphan Works Act of 2008

2008-09-27T15:39:00.005-05:00

THOMAS, the Library of Congress' legislative website, indicates that the Shawn Bentley Orphan Works Act of 2008 passed the Senate yesterday.

(Wait a minute. Weren't they supposed to be working on the bailout?)

We will blog on this issue in greater detail, in the coming weeks.

In the meantime, in case you didn't know: Shawn Bentley was a lobbyist for Time Warner. Previous to that gig, he served on the Judiciary staff in the office of Senator Orin Hatch, co-sponsor of the bill. Mr. Bentley died of cancer at the age of 41.

We can understand Senator Hatch's desire to honor the memory of a loyal staffer. But really -- given the extreme controversy over orphan works legislation -- where's the wisdom in naming it after a Time Warner lobbyist??

How To Defraud The Trademark Office (Without Really Trying)

2008-09-25T08:43:00.003-05:00

Completing the application forms for United States trademark registration looks to be simple enough. It looks so simple, in fact, that trademark owners often undertake the process themselves, without the assistance of counsel.

You can probably guess where we're going with this....

Let's say you are in the business of selling certain alcoholic beverages. You decide to do your own trademark application. When it gets to the part where you have to describe your goods, you choose a few items from the online menu. You choose "Wine, spirits and liqueurs." Simple enough. You submit the application. It sails through without an office action and eight months later you've got a sparkling new US trademark registration in your hands.

"@#$&^ lawyers," you grouse, "they are SO not necessary!"

Five years later, it's time to go back to the Trademark Office and submit a statement of continued use. This is also rather easy to accomplish online. And now (see quotation above), you're feeling like you rule the trademark universe. So you submit the section 8 and 15 statements and go out for coffee.

A couple of months later you're served with notice that a competitor has commenced a proceeding to have your registration cancelled because you committed fraud on the Trademark Office.

What??

Well, as it turns out you use your trademark on wine and whiskey, but not once did you ever use it on a liqueur. When you saw "liqueur" on the menu of acceptable goods, you thought, "sure, well I might do that someday so let's throw it in." Bad idea.

Read the fine print. You swore to the Trademark Office on everything holy that you were actually using that trademark in connection with each and every item listed in your description of goods and services. And you weren't. You might call that a mistake; the law calls it fraud.

It was fraud when you first submitted your application, but you were lucky. Your competitor either wasn't paying attention or wasn't in business at that time. Nobody noticed, and you got your registration. Later, when you submitted your section 8 and 15 statements, Competitor was paying attention, saw the chance to shut you down, and pounced.

Competitor wins the cancellation proceeding -- easily -- and your trademark registration is cancelled.

"@#$&^ lawyers," you grouse, "where are they when you need 'em?"

We're right here. Give us a call.

(If you want to read about a case with almost these exact facts, here's the link.)

RIAA Litigation Articles

2008-09-23T09:15:00.004-05:00

In his blog, Recording Industry vs The People, Attorney Ray Beckerman acknowledges a recent Note in the Minnesota Journal of Law, Science and Technology entitled,
The RIAA Litigation War on File Sharing and Alternatives
More Compatible With Public Morality by Daniel Reynolds.

Ray's own article, published in the Summer 2008 issue of the ABA Judge's Journal, is entitled, Large Recording Companies vs. The Defenseless : Some Common Sense Solutions to the Challenges of the RIAA Litigations. Ray posted an epilogue to the article on his blog, on July 30, 2008.

Music Licensing Q&A

2008-09-22T17:20:00.004-05:00

If the AAM article is more than you want to tackle, our Ruly Press website has a fun, user-friendly Q&A about music public performance licensing for songwriters and business owners. Check it out, here.

Net Neutrality

2008-09-22T17:05:00.003-05:00

Net Neutrality continues as a major tech debate. There is no generally accepted definition of the term, "net neutrality." In its broadest sense, however, the debate surrounds broadband carriers and the extent to which they may impose restrictions on the content and applications consumers can access online.

Google and the Future of Music Coalition offer relatively simple (yet decidedly biased) explanations of the issue.

In June, 2007 the Federal Trade Commission issued a lengthy staff report on the issue. A summary of the report appears here. To be frank, it's not clear to Russell Law what this report actually says. We might be influenced, however, by the fact that one of the report contributors actually holds the following title: Assistant General Counsel for Legal Counsel, Office of General Counsel. (We're not making this up.)

Contracts: A Note About "Short"

2008-09-22T16:51:00.002-05:00

When we are drafting contracts we hear the same thing over and over and over: "Keep it short."

Clients don't often say, "make sure it protects my interests" or, "be thorough" or, "be accurate." They expect those things, surely. But when they see a well-drafted contract their comments are more along the lines of, "it's too many pages" or, "it looks too scary" or, "what can we cut?"

An article on the Russell Law website addresses these concerns and presents some additional considerations. In our view: short is great, but only if it does the job. We invite you to review this (short!) article and contact us if you or your company could benefit from customized training in the fundamentals of contracting.

The Importance of Trademark Registration

2008-09-22T16:42:00.005-05:00

Given that trademark rights arise from actual use, many clients ask, "why should I go to the expense of federal registration?"

A May 2008 decision from the Tenth Circuit Court of Appeals provides one answer.

In this case (Utah Lighthouse Ministry v. Foundation For Apologetic Information and Research) the plaintiff, Utah Lighthouse Ministry (ULM), maintained a website criticizing the Church of Jesus Christ of Latter-Day Saints (LDS). In response, an organization associated with LDS launched a website criticizing ULM. The LDS site looked very similar to the ULM site, and used the term "Utah Lighthouse."

ULM sued for trademark infringement.There are three elements to proving trademark infringement: a.) the plaintiff owns a protectable trademark; b.) the defendant used that trademark for a commercial purpose; and c.) the defendant's use of the trademark is likely to cause consumer confusion or mistake, or to deceive.

When the allegedly infringing LDS site went up, ULM did not hold a federal trademark registration. ULM later acquired a registration, however, and held it at the time of the lawsuit. So when it came time for ULM to prove the first element of infringement (owning a protectable mark) - ULM simply relied on the fact that they'd subsequently acquired a federal registration.

That was a mistake.

If ULM had held its registration at the time of the infringement (said the court), OK. That would have proven ownership of a protectable mark. But since they didn't hold a registration at that time, they had to start from scratch and present evidence that "Utah Lighthouse" was a distinctive, protectable trademark at the time of the infringement.

ULM was unable to present such evidence and, consequently, was unable to prove trademark infringement. They lost, in part, because they'd waited until there was a problem to pursue federal registration.

Don't wait.

Contact Russell Law to start your trademark protection program.

Website Legal Issues

2008-09-21T20:23:00.004-05:00

Russell Law's Article of the Month is entitled, "Your Website: Legal Tips and Best Practices."

Do not underestimate the importance of attending to the many legal issues that maintaining a website presents. Russell Law was recently involved in a bank acquisition that didn't close because the bank being acquired hadn't properly cleared licenses for the images on its website. Later that same year we counseled a nonprofit that nearly folded for the same reason. These are serious issues, and yes -- they really do matter.

Music Licensing

2008-09-19T22:41:00.003-05:00

Russell Law recently published an article on the website of the American Association of Museums, entitled, Learning Music Licensing.

The article is intended as a primer on music licensing for museum professionals. However, the basic concepts apply to all businesspeople that perform music publicly in their businesses. Take a look at the article, and feel free to comment here or contact us with questions.

Poor Man's Copyright

2008-09-19T22:13:00.003-05:00

"I heard that if I mail a copy of my work to myself in a sealed envelope it's just as good as getting a copyright. Is that true?"

Rarely do we lawyers have the opportunity to offer definitive, black-and-white answers. That's why it's so fun to answer this question.

The answer is: No. That's not true.

US copyright is governed by federal (as opposed to state) law. That means, if someone infringes your copyright rights you have to sue them in federal (as opposed to state) court. You can't sue for copyright infringement in federal court until you have registered your work with the US Copyright Office. So mailing the work to yourself does absolutely no good in terms of enforcing your rights. You must register, or you can't sue.

There are all kinds of good reasons for registering your work, besides shoring up your eligibility to sue people. If you register within a certain window of time, you may be able to recover a higher measure of damages (called, "statutory damages"); registering within that window can also mean the difference between recovering your attorney fees and costs -- and not.

Now. That sealed envelope wasn't a total waste of time, as long as you also registered. If you do end up in federal litigation, that mailing could possibly be useful as evidence if the date of creation (of your work) becomes an issue. So mailing work to yourself does no harm, and it could even come in handy.

But it's no substitute for registering your work.

Russell Law provides counsel on copyright registration.