Dear Rich: I read that the government is planning a song database and songwriters who don't register will lose all copyrights. Can you explain? The Transparency in Music Licensing and Ownership Act (TMLOA) is a proposed law that, should it be enacted, would create a song database run by the Copyright Office. Supposedly, the database would make it easier to locate the song owner or PRO. Note: A song owner does not have to register copyright to provide information to the TMLOA database. Failing to register. A song owner who fails to register will not lose copyright. The "punishment" for not registering is that if the song owner sues a store, restaurant, web radio, or other industries mentioned in the TMLOA, they can only collect the actual damages, not the statutory damages or attorney fees. The underlying effect of the proposed law would be to discourage lawsuits against various industries. The TMLOA is not considered particularly favorable to song owners, and has been characterized as "an all-stick, no-carrot deal." Bottom line dept. A few things to keep in mind: (1) ASCAP and BMI are cooperating on their own publicly accessible database in order to discourage passage of this legislation. (2) Regardless whether the legislation passes, any song owner who doesn't file for copyright before infringement occurs, cannot collect statutory damages. (3) Considering the track record for proposed copyright legislation, the cost and technology required, as well as the rumors spreading about the TMLOA, the odds disfavor passage of this partisan business legislation.
Dear Rich: I want to know if it is considered sampling when you record sound coming from a synthesizer that is playing electronic note data stored on a memory chip. Technically when you play an NES game (80s video game system), the music that is playing is not pre-recorded. It is actually played "live" from musical note data on the game cartridge (gameplay triggers a MIDI pattern) in the console into the internal synthesizer. When I record synthesized sounds for the purpose of using them in new music, would it count as a sample or a cover? When MIDI code triggers a synthesizer, it's similar to a piano roll triggering a player piano. In both cases, music written by a human is programmed to be played by a machine. Whenever a human creates an original fixed work (the code is fixed on the game cartridge), it's protected by copyright. In order to record, remix, or repurpose the NES/MIDI melodies or themes, copyright law requires that you get permission from the composition's owner -- either Nintendo, the game company, or in rare situations, the composer. Unless the music has been released on CD or authorized downloads such as MP3s, you would not use the compulsory mechanical license used for cover songs because that only applies to compositions that have been released on sound recordings (not video games or movies). Sample licensing usually includes two licenses, one for the composition, the other for the recorded performance. You wouldn't need the license for the recorded performance (aka the master recording). What if you don't get permission? Failing to acquire permission won't matter if the copyright owner never learns of your use (a good possibility unless your track goes viral). And even if the owner does learn of your work, the owner may not want to hassle you for financial or publicity reasons. The owner may be most likely to care if you use your music in a video game or movie. Permission may not be needed. Authorization is not needed if your sampling is excused as a fair use, determined by the four fair use factors. Your use differs from the original purpose of the music -- to enhance the gameplay experience. So, that's transformative (and in your favor). Another fair use factor is how much material you have used. The less you sample, the less you loop, and the less that the song is built around the loop, the stronger the fair use argument. Still, as we always warn: Fair use can only be used as a defense to copyright infringement. That is, you must already be in court. Also, permission might not be necessary if the MIDI composition is not original (for example based on folk music) or is so simple the pattern is considered an essential building block of music composition (for example, the arpeggio associated with boogie-woogie piano). Again, like fair use, these are defenses raised at trial.
"An issue of recurring application is publicity photos for motion pictures from the 1920's through 1970's. The films themselves from that era were routinely protected as validly noticed and registered works; but much less care was typically exercised during production and in the publicity office. (1-4 Nimmer on Copyright § 4.13[A].)
In some situations, the lack of notice might have been deliberate. A notice might have discouraged reproductions and the whole point of these 8 x 10 glossies was to get publicity. In one case that arose over the use of posters and promo photos from the films The Wizard of Oz and Gone with the Wind, the Eighth Circuit Court of Appeals ruled the materials entered the public domain when they were distributed without a copyright notice. Before 1964? If any of the stills were distributed before 1964 it's likely they entered the public domain. Works published before 1964 had to be renewed and only a small percentage (estimated to be less than11%) met that requirement. If it is still under copyright ... there are a few things to consider:
Who owns the copyright? It's probably either NBC or the production company that created the show (or an assignee of either of the two). It's possible but unlikely that the rights for promo photos were transferred to a third party stock photo house such as Getty. That's easy enough to check using Google's Reverse Image Search
Will the copyright owner learn of your use, and if so, will they care? If a reverse image search confirms several unauthorized uses, that may indicate that either (1) the copyright owner is not trolling the web for old promo photos, or (2) the copyright owner doesn't care about those reproductions. If the owner of the photos also owns rights to the TV series, it wouldn't be good publicity to go after a former star of the show while the show is still in syndication.
Does your posting of the picture constitute fair use? Based on the four fair use factors, we think you have a strong fair use argument. However, as we always warn, fair use is a defense made when the case is being litigated -- already an expensive proposition.
Dear Rich: I wrote an 84-page culinary history book proposing that Trader Joe's changed the way America eats. I self-published it recently (as it is their 50th anniversary this year.) The book analyzes a March 1982 flyer, which TJ's had mailed to our house. I scanned the flyer and cut up the food descriptions, then organized them into types of food to provide commentary on food "then and now" as well as commentary on the writing in the flyer as the company encouraged people to discover new foods. There are multiple disclaimers on the book that this was not published by TJ's, and the text of the book is all positive. Once I published the book on Amazon, they stated I did not have the right to use the flyer images. Is this fair use? The illustrations and artwork are all original. There is no copyright statement on the flyer! Only an (R) to trademark the flyer name of "Insider Report." We've reviewed your book and we're not sure why the company is objecting. No copyright, no cry. We believe that the failure to include copyright notice placed the flyer into the public domain, making it free for anyone to use. For works published before March 1989, authorized publication without notice typically doomed works, unless excused. (By the way, the U.S. was the only country following this rule.) Even, if the flyer were not in the public domain, you have one of the stronger cases for fair use that has crossed the Dear Rich Staff's desk. Only one of the four fair use factors -- the amount and substantiality of the portion taken -- weighs against you. Otherwise, your reproduction of this 35-year old advertisement appears highly transformative as it is viewed it in a historical context, and should have no effect on the potential market as it does not deprive the $13-billion-a-year chain of any income. Trademark rights. A company can object if its trademark is used in a manner that confuses consumers as to source -- for example, consumers believe your book is sponsored or authorized by Trader Joe's. This is unlikely considering your prominent disclaimer and your failure to include the company's distinctive letter or logos. Further, as we've written before, the use of a company's trademark is permitted for editorial purposes -- which is clearly the case, here. Bottom Line Dept. It's difficult to understand why the tiki-themed grocery chain is objecting to your book, especially considering how TJ-positive it is. We can only chalk it up to too much Cookie Butter. SaveSave
Dear Rich: Almost two years ago I had an idea and with two other guys that I worked with. We developed a product completely outside of work (none of our jobs were in hardware design etc.). We took almost a year to get the product right, but at the end, we had 10 prototypes created and decided to let our boss know about it as he could benefit from it and we could benefit from his funding us. We came to a verbal agreement that he would fund our further development and that we could use time/space at work to further work on it. He would loan us funding for inventory and circuit changes etc. In return, we would give his company exclusivity for one year before we sell it publicly. That would give him the advantage in the market and after the year we would also give him favored nations pricing. He said he would pay for the patent and wanted us to assign it to him as insurance that we would pay off the debt to him. Once we did that, he would assign it back over to us (it did sound strange but we trusted him). We did try to get our agreement in writing. We have various emails and instant messages with him and the point of contact he wanted us to brief. but in hindsight, it seems he was stalling because he recently sold the company and is claiming that we never had an agreement or that since we assigned it to him we don't own anything. But we were never compensated and would never have assigned without the agreement we came to. So, in our minds, we wondered whether it was an assignment based on fraud or was unconscionable? Why would we assign without getting anything at all? Is there anything we can do? Unfortunately, like many inventors throughout history, you have been separated from your patent rights. Re-acquiring ownership may prove challenging and expensive. We should note at this point that your employer has only prospective rights as the patent has not issued. The Assignment. You and your co-inventors signed a written assignment transferring the patent application for "good and valuable consideration, receipt of which is hereby acknowledged." That document was recorded at the USPTO and your employer subsequently transferred the patent from his corporation to his LLC. In order to get the rights back, you need to (1) convince your employer to assign the rights back to you (through negotiation or litigation), or (2) convince a judge to invalidate the patent assignment. Was the assignment fraudulent or unconscionable? Fraud, also known as misrepresentation, is a false statement upon which another party justifiably relies, resulting in damage. In other words, if you can prove that your employer lied to you (or concealed the truth) and you had reason to believe the lie and were damaged, a court may invalidate the assignment. (Damage may be difficult to prove because a patent hasn't yet been granted.) A contract also won’t be enforced if it is unconscionable or grossly unfair. This almost always occurs in situations where the bargaining power is severely imbalanced and the party with more power takes advantage by forcing unfair conditions, clauses, or waivers on the other party. Fraud is often successful as a contract defense; unconscionability is not as successful. The employment relationship. Further complicating your situation is your relationship with the employer. Ownership rules about "employed to invent" and "shop rights" get fuzzy once (1) the employer funds development, (2) the employee works on the invention on the job, or (3) the employee uses company facilities. Another issue is whether the invention is something that is related to the employer’s business or actual or “demonstrably anticipated” research or development. What to do? We doubt whether you or your employer want to bear the cost of patent litigation, and for that reason we suggest you retain a patent attorney to properly analyze the situation, and if necessary, apply pressure on your former employer to work out a solution. Because there are costs for which the employer requires compensation and because the patent has not issued, your lawyer may suggest various compromise solutions. It helps to keep an open mind, especially if you want to keep costs down. Because you are in California, you may may be able to save on costs by using the services of an attorney connected with California Lawyers for the Arts.
Dear Rich: I built my business on printing my designs on fabric and making stuff. Now there's a handy service (VIDA) that makes stuff with your uploaded design and sells it to others. That makes it easier. I am just leery of any "catches." Can you look at the licensing agreement? VIDA is a socially responsible e-commerce company, launched in 2014, that connects designers with manufacturers around the world and sells the resulting products at its site. Artists and designers submit original fabric designs which, if accepted, are converted to fabric and used for apparel and housewares merchandise. The designer receives a 10% royalty for each sale. Nonexclusive and Exclusive Licenses. According to Vida's Designer's Submission and Licensing Agreement, by submitting your designs, you give Vida a nonexclusive license to reproduce your design primarily for marketing and promotional purposes. Once an order is made, you give Vida exclusive rights to sell your design in the designated categories (classes of goods that you selected when you submitted your design). How does Vida's license stack up? (Here's an overview of the merchandise licensing process.)
Royalty - Artists receive 10% of net revenue (gross revenue minus discounts, shipping and similar expenses). Fabric design royalties typically range between 2 and 10%.
Length of licenses - You can terminate the nonexclusive license thirty days after providing notice. You can terminate the exclusive license within one year after providing notice. Most fabric licenses are for 1-3 years with one year renewable terms.
Limitations - The exclusive license is limited to designated categories. By omitting a designated category when you submit, you can further limit exclusivity.
Reliability of the licensee - The company appears to be well-funded and has been around for almost three years (a good sign for a start up).
Though the agreement is relatively friendly to artists, there are some details we are not wild about -- for example, the ability of Vida to assign your exclusive rights within the designated catergories. You can compare Vida's agreement with a model license agreement and explanation.
Dear Rich: Currently, my story is unpublished because I had a writing partner who was working on the book with me. Unfortunately, he has quit the project, but I would still like to continue it and see it towards publishing. What are my steps in signing away his portion of the story and giving me the rights? What are the documents he'll need to sign and how may I get those? The document you'll need is an assignment of copyright, which is a permanent transfer of rights. It must be in writing (not an oral agreement). Basic assignment. Below, we provide a very basic copyright assignment that should work for you. (For more sophisticated assignments, see our Getting Permissionbook.) Your co-author is the "Assignor" and you are the "Assignee." Only the Assignor needs to sign the assignment agreement. If you are paying for these rights, you should acknowledge your payments to your co-author somewhere in the agreement. What if you signed a co-writer agreement? If you have a written co-authorship agreement (sometimes known as a co-writer or co-ownership agreement), you may have to follow the requirements of that agreements as to resolving disputes or other co-ownership issues.
Assignment of Copyright By Co-Owner
I, _________________________ (“Assignor”), am co-owner of the work entitled ______________ (the “Work”) and described as follows: _______ _____________________________________. For consideration which I acknowledge, I assign to ______________________ (“Assignee”) and Assignee’s heirs and assigns all of my right, title, and interest in the copyright to the Work and all renewals and extensions of the copyright that may be secured under the laws of the United States of America and any other countries, as such may now or later be in effect. I agree to cooperate with Assignee and to execute and deliver all papers as may be necessary to vest all rights to the Work. Signature of Assignor ___________________