Much has already been written about “in-game” use of trademarks.
This article, part 1 of 3, is a good primer on the subject.

BFads.net, my destination of choice for scoping out upcoming Black Friday (and this year, pre-BF) sales, gives a roundup of the various cease-and-desist letters it’s received from retailers so far this year. Of note is the communication from Sears, which prohibits BFads from displaying scans of the ad itself, but allows them to provide a text list of the sale items. Well played.

LaLa, the music site that generated some buzz on its launch for its unique listening and pricing structure, might be in for some press they don’t really want. It seems they’re making a habit of jazzing up their band pages with photos from Flickr, without bothering to get permission from the photographers first. After Flickr users got wind of this and raised the alarm, it appears LaLa added a line above each photo crediting Flickr as the “source”, and a link reading “Report image” that, when clicked, fires up an email to their support team.

It’s unclear if LaLa has some sort of relationship with Flickr that they believe permits this activity even without some express opt-in by Flickr users. Barring such an arrangement, I expect LaLa is going to be spending a bit of time dealing with a flood of DMCA notifications.

Update: it appears LaLa got the message, and has pulled all of the suspect photos from the site.

A sad day for anyone interested in copyright law.

Thirty years ago, Wal-Mart entered into a handshake deal with a video production company to producer and record manager and shareholder events. In 2006, Wal-Mart ended its relationship with the company. Now, the production company is making its catalog of 15,000 tapes available to anyone who comes calling.

How can the production company get away with this? Doesn’t Wal-Mart own the tapes and, more importantly, the copyright in the tapes’ content?

Wal-Mart might have some claim of ownership in the tapes (though for some reason they offered to buy them after this all happened), but they almost certainly don’t own the copyright in the content of the tapes. Why? Because whether you’re Wal-Mart or Joe’s local convenience store, without a written agreement to the contrary the independent contractor owns the copyright in the works he, she or it creates. So if you’re contemplating paying an independent contractor to design your company’s website, or write an article for your publication, or take photos for your marketing materials, you’ll want to present that contractor with a written contract spelling out the ownership issues, e.g., whether the contractor is assigning the copyright to you, or whether you’re licensing the work from the contractor. If you don’t, you lose the ability to use the materials as you see fit. (We’ve written on this topic previously)

Nicky Ree designs virtual clothing for users of the online community Second Life. In this post, she recounts her efforts in combating another designer whom she alleges is infringing on her work. While fashion designs in the “real” world generally aren’t protected by copyright (not yet, anyway), these designs are virtual, and hence the digital images of the designs are protected. Ms. Ree supplies some screen shots to illustrate the alleged infringement.

Ms. Ree’s post also illustrates her attempts to use the Digital Millennium Copyright Act’s notice and take down procedure to have Linden Labs remove the allegedly infringing materials from Second Life, and some of the troubles she ran into along the way.

Update to add: Plagiarism Today recently posted an in-depth look at infringement in Second Life.

Does a photograph of a copyrighted work — say, a photo of a sculpture or a painting — constitute a derivative of that underlying work? As William Patry notes, maybe yes, maybe (and perhaps more logically) no.

ArtistHouse Music offers up a great interview with entertainment attorney Jay Cooper of Greenberg Traurig. Each issue he touches on — from his dislike of the 360 deal, to what labels look for in artists, to advice for parents of musicians — is broken out into its own segment. Here’s what Attorney Cooper has to say about the 35 year copyright reversion clause, and why he believes record labels are wrong in believing their artists’ recordings are works-for-hire.

Very much worth your while, whether you’re a musician, an attorney, or neither (or both).

This thorough account of one photographer’s successful copyright infringement suit against a financial and real estate agency that used two of his photos in their advertising without authorization illustrates two things: first, that yes, you do need permission to use works you find on the internet, and second, that lying about where you found the work and forging an invoice is a great way to put yourself on the hook for significant statutory damages. If you come across a work you’d like to use for some commercial endeavor, chances are it was created by a hard-working artist who would be more than willing to license it for a fair price.

Here are two scenarios we run into from time to time…

Scenario 1: Ted started a web development business, and he’s ready to roll it out and start creating websites for his clients. He wants to make a marketing splash, so he’ll need a nice logo. But Ted’s a business person, not a designer, so he decides to find someone to come up with a design. Since he can’t afford to hire an employee just yet, he locates an experienced independent contractor whom he trusts can do the job. She doesn’t present Ted with a contract, and Ted doesn’t bother giving one to her. This is a handshake deal. Anyway, Ted’s got so much going on, he can’t even think about more paperwork. A few weeks go by, and the designer presents Ted with the perfect logo design. Ted pays her promptly, and in return she gives him the electronic and printed versions of her work. Ted’s ready to put his logo on his business cards, website, and letterhead.

Scenario 2: Ted’s web development business is running smoothly, and he’s entered into a contract to create a website for a client. He decides to subcontract some development work out to another independent contractor. Ted likes this contractor, and he’s afraid the contractor will not agree to do the work if Ted presents him with a contract to sign. They verbally agree on the project, and a few weeks later the contractor delivers exactly what Ted asked for. Ted’s now ready to present the website to his client and collect his fee.

In both of the above scenarios, Ted has paid for the materials produced by an independent contractor. But what does Ted really own?

Without a written agreement to the contrary, the independent contractor, not the client, is the author and copyright owner of all materials she creates.

In both scenarios, because Ted didn’t have the contractor sign an agreement in which he or she assigned ownership (or created the materials as a work made for hire) of the copyright in the materials they produced over to Ted’s business, Ted doesn’t own the copyright in them. The “bundle” of rights provided by copyright – the rights of reproduction, distribution, display, public performance, and making derivatives – remain exclusively with the contractor, notwithstanding the possibility of an implied license to use the works.

What does this mean for Ted’s business? With respect to the first scenario, it means that while Ted may be able to use the design as his logo on business cards, his website and letterhead (under a theory of “implied license”), any use beyond that may result in a copyright infringement claim by the contractor. Furthermore, the contractor remains free to make use of those same materials herself or for her other clients, which certainly won’t help Ted’s attempts to distinguish himself in the marketplace.

In the second scenario, although the website is complete and Ted has conveyed it – including, ostensibly, the copyright in all associated materials – to his client, the copyright in whatever portions of the website were created by the contractor remain owned by him. If your client later finds out Ted’s purported to convey copyright he didn’t have the right to convey, Ted may find yourself facing at least a breach of contract claim. Furthermore, the contract Ted signed with the client likely holds his business liable for any copyright infringement claims brought against the client. For a business just starting out, even the mere threat of litigation can grind the gears of progress to a messy, and often permanent, halt.

The bottom line is this: as a business owner, you want to own all of the property you pay for, both physical and intellectual, so you are free to make whatever use you like of that property. You do not want your business potentially held hostage by a contractor who exploits his or her ownership of the copyright in materials critical to your success.

With all of this in mind, we advise both individuals and businesses that any independent contractor they intend to use must sign a written agreement in which the contractor agrees to assign to the client all copyright ownership in any materials produced under the agreement. These agreements are often known as “work for hire” contracts, and if appropriately drafted they needn’t be burdensome in length or language. Any experienced contractor should not be at all surprised to be presented with such an agreement; if the one you’re talking to balks at the mention of it, find yourself a new contractor.

In addition to copyright ownership, the terms of these agreements also address important issues regarding liability, such as situations where the contractor copies code or a design from someone else and passes it off to you as original work, thereby exposing you to a copyright infringement claim.

While ideally the agreement will be executed prior to the contractor beginning work, it may be possible to have the terms of an agreement apply retroactively. So if you’re in the middle of this scenario now – and if so, you’re not alone – it may not be too late to take remedial action.

For more information about issues to consider when working with independent contractors, send us an email or give us a call at 978-463-9100.

If you call the U.S. Copyright Office today, the hold message informs you that the Office can take upwards of four months to issue a registration certificate, assuming the application is in order. This normally isn’t a problem, as applications for registration are generally filed as a matter of course and not in response to some pressing need. Furthermore, the constructive date of registration is the date the application is received at the Copyright Office, not the date the certificate is generated, so receiving the certificate four months down the road isn’t cause for concern.

However, some clients do find themselves in circumstances where a registration certificate is urgently needed, and a four month wait just won’t do. In such a case, the Copyright Office does make available an expedited registration process, known as Special Handling.

Special Handling is available only where a registration certificate is required in connection with:

• pending or prospective litigation;
• customs matters; or
• contract or publishing deadlines

In order to take advantage of Special Handling, an application sent by mail must be accompanied by a brief letter detailing why the request falls into one of the three acceptable urgent need categories listed earlier, and a signed statement certifying that the information is correct to the best of the applicant’s knowledge. Should the applicant choose request special handling in person (which has the advantage of avoiding the delay caused by mail screening procedures), the Office will provide the applicant with a form to fill out.

In addition to the application and explanatory letter or form, the applicant must include the required deposit materials, the standard filing fee, currently $45, and the special handling fee, currently $685.

The Copyright Office sets a turnaround target of five business days after receipt of the application in the Special Handling department, though that is of course not guaranteed. If the need is particularly urgent, it may be possible to get the registration number directly from the Copyright Office even before the certificate is issued.

The Special Handling circular from the Copyright Office provides additional details.

For more information about copyright and copyright registration, call us at 978-463-9100 or send us an email.