Nolo’s Patent, Copyright, and Trademark Blog

Dear Rich: I have a question. I read about an artist who is trying to get paid by the State of California. They’re using his painting of a whale on license plates. I thought all images of animals were in the public domain. I’m interested because I’m a crafts artist and I’d like to replicate certain animal images on jewelry. I’m so glad you asked. I’ve written about one aspect of your question — the copyrightability of art that borrows from nature — in a Nolo article, so check that out. If you’re too busy to get through the whole thing, I can summarize it by saying that the natural appearance of birds, bees, flowers, and the like are in the public domain. So if you’re making wax candles that look exactly like a corn cob, or animal heads that look exactly like a leopard, you’ll have a hard time claiming copyright.

But if you’re going beyond an exact replication of an animal — for example, painting an inspiring shot of a whale’s tail as the animal dives into the water, or creating a whimsical bespectacled penguin that also understands IP law, your original expression is protectable and you can stop others from copying.

In regard to the whale license plate, the bigger issue seems to be that the artist made a handshake deal with the State of California. (Who knew states had hands?) As readers of the Dear Rich blog know, all arrangements transferring intellectual property should be in writing. Lacking any paperwork, the state’s got a weak defense.

BTW, we almost quoted directly from the Associated Press story on the subject. As you’re probably aware, there’s no way the The Dear Rich blog is going to move beyond its current obscurity without being publicly chased by a big-time plaintiff (and the AP is a tempting, though unglamorous target). Alas, we decided to hold out for Mr. Right.

Dear Rich: I have a question. Can a copyrighted or trademarked item be reused or “repurposed,” as they like to say in the recycling circles, into a new product for sale without permission? For example, can someone take a cereal box, cut it up, use the front of the box as a notebook cover and legally sell that notebook? Can someone tear a page from a magazine or calendar, fold that page into an envelope and legally sell that envelope? How about a bottle cap? Can someone fashion a piece of jewelry from a bottle cap that is identifiable in the finished piece? I’m so glad you asked. The short answer: Making jewelry from a bottle cap is probably okay, ripping pages from a magazine and selling envelopes could be fine (but ripping pages from a book or calendar may not), and making notebook covers from cereal boxes may lead to trademark problems.

The long answer (zzzzzz) is a bit more nuanced. Here goes: Copyright law permits the purchaser of a copyrighted work to resell, destroy, or do whatever they want to that work, as long as they don’t step on any of the copyright owner’s exclusive rights. This principle is known as the first sale doctrine, and that’s why people can sell used books, movies, and music on eBay and Amazon. The term “first sale doctrine” comes from the fact that the copyright owner maintains control over a specific copy only until it is first sold. (One exception: If it’s a limited edition artwork or fine art work — for example, signed and numbered photographs created in limited editions of 200 or fewer copies — you can’t destroy it.)

Naturally, things aren’t always so simple. For example, two cases involving the resale of artwork seem to have arrived at different results. In one case, a company purchased a book of prints by the painter Patrick Nagel and cut out the individual images in the book and mounted them in frames for resale. A court of appeals in California held that this practice was an infringement and was not permitted under the first sale doctrine. (Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (1988).) (A similar result was reached in Greenwich Workshop Inc. v. Timber Creations, Inc., 932 F.Supp. 1210 (C.D. Cal. 1996).) In a different case, a company purchased note cards, mounted them on tiles, and resold them. A federal court in Illinois determined that this practice was okay. (Lee v. Deck the Walls, Inc., 925 F.Supp. 576 (N.D. Ill. 1996.) (The same result occurred in C.M. Paula Co. v. Logan, 355 F.Supp. 189 (D.C. Texas 1973).) So, under these rulings, a person cannot rip individual images from an art book and resell them, but a person can mount individual note cards and resell those. Another case added further confusion when a federal court ruled that the purchaser of a bundle of software programs could resell the individual components (separate programs on CDs). (Softman Products Co. LLC v. Adobe Systems Inc., 171 F.Supp. 2d 1075 (C.D. Cal. 2001).)

You definitely want to take some care selling repurposed items that contain trademarks. Although you’re free to sell empty cereal boxes, you want to avoid implying that the cereal company is endorsing or is associated with your notebook products. That’s going to be tough to do if the cover of your notebook is identical to the cover of the cereal. Consumers will necessarily confuse the two and likely think the cereal company is selling notebooks (not a major leap, considering they sell to kids). A prominent disclaimer may help — for example, a statement that your business is not affiliated with or endorsed by the trademarked company. But who’s going to want to look at a big disclaimer on the cover? Whatever you do, don’t play up the trademarks you use in your company’s marketing or business name. For example, it’s not a good idea to name your website “Cheerios Notebooks.” Finally, as with all issues like this, the lower you are on a company’s radar — that is, the less you sell — the more likely you are to avoid any hassles.

Dear Rich: I have a question. I am a science journalist and I’ve recorded interviews with many famous scientists. I’ve used this material in books and articles and would now like to use these on a website for free, open-access listening. Someone has suggested that I obtain permissions from all my subjects or their estates. I believe that no permissions are required because the subjects implicitly granted me permission to use the interview material as I saw fit when they sat down with me and my tape recorder and pad. I’m so glad you asked. You are navigating through one of the grayer areas of copyright law so in answering, I’ll have to use a lot of equivocating language, such as ‘likely,’ ‘may,’ and ‘probably.’ If you don’t have time to read all of that stuff, the bottom line is that you are probably okay to do what you plan to do. The courts and legal scholars are not a beacon of clarity when it comes to divvying up the rights for interviews.

From the limited case law available, it’s likely that a court will consider an interview to consist of two separate works: one work created by the interviewer’s questions, and the other created by the subject’s responses. These works may be protected under traditional copyright principles (or they may be protected under what’s referred to as common law copyright). Under that ‘two-separate works’ approach, you’d need permission to reproduce the subject’s answers. That permission may be implied by the subject’s consent to the interview. In fact, one court — dealing with an interview with Ernest Hemingway — hinted that Hemingway’s failure to limit usage at the time of the interview implied unlimited use.

Some legal scholars argue that a better approach is that the interviewer and subject jointly create one work. Under that analysis, the interviewer and the subject are joint authors. In that case, either author can use the interview for any purpose provided that the party using the interview accounts to the other for any profits. If this approach were applied to your case, your use should be fine since you are distributing the interviews for free and (assuming you are not making money off the website) no accounting would be necessary. You can read more on these two approaches at the Publaw.com site. Also, as you are probably aware, if you proceed without permission, you would have a strong fair use argument for distributing these interviews based on their historic and scientific value.

The whole thing becomes more complicated if you are making money from the sale or licensing of the recordings — a situation that may trigger a right of publicity claim or (if you and the subject are considered joint authors) an accounting of moneys earned to the interview subject. Finally, there is some question as to whether federal copyright protection extends to a recorded interview, since simultaneous recording of the performance of a work of authorship (that is, not being broadcast) is not considered to be fixed. That means that the interview is not protectable under copyright law (hence the need to use common law copyright, as described above). There’s no guarantee that this will all play out as described. A lawyer would advise you that the only 100% safe course is to obtain permissions. But I think your chances of avoiding hassles are good and I personally look forward to listening to the interviews. There is always so much to learn about our scientific heroes.

Dear Rich: I have a question. I am an illustrator. Is it true that the government is setting up a database of visual arts works? And is it true that any works that you don’t place on this register will become “orphan works” that anybody can use without your permission? I’m so glad you asked. The answers to your questions are “maybe,” and “not exactly.” An orphan work is one that is owned by a hard-to-find copyright owner. For example, in 1975, a child sends a drawing to Elvis Presley. In 2008, a biographer wants to include the drawing in a Presley biography. The problem is that the artist can’t be found and the publisher doesn’t want to reproduce the image without permission. Two bills have been proposed in Congress that address this issue. The proposed bills would allow the publisher — after performing a diligent search –- to reproduce the image. If the artist later appears, the publisher would have to pay a reasonable fee for the use. An unlikely crew of special interests favor the House version of the bill, including librarians, free-speech types, copylefties, academics, writers, photographers, and big industry groups like the RIAA (and, of course, Google). Under the House bill, anyone who wants to use a work must (1) document their “good faith” search for the owner, (2) file a “Notice of Use” with the Copyright Office before using the work, (3) provide attribution if they know the name of the creator, and (4) include a special “orphan works” symbol when the work is published.   

 Illustrators and artists are concerned about the bill because it would establish a registry of visual arts works. They’re worried that if a piece of artwork doesn’t show up on a registry search, all rights to that artwork may be lost. First, keep in mind that orphan or not, copyright is always preserved in the work. Second, there’s nothing in the law that says that a failure to appear in the registry automatically creates an orphan. For example, even if the drawing of Suda (above) did not appear in a registry, I would still have a hard time claiming it was an orphan … since the artist and his work are easy to locate on the web (Steve, please don’t sue).

Dear Rich: I have a question. Why should I care about the Harry Potter case? Isn’t it just another example of a huge megacorp using copyright law to crush the little guy? I’m so glad you asked. I don’t know why you should care about the Harry Potter case. And I don’t know why you should care enough to ask me why you should care about it. I don’t even know why you should care about reading the answer to your question. What people care about and why they care about it is a mystery to me.

The Harry Potter lawsuit — in which a publisher and author are attempting to stop publication of a Harry Potter lexicon — is not an unusual copyright dispute. Maybe you’re too young to remember when J.D. Salinger successfully stopped a biographer from using his unpublished letters, or when ex-president Ford stopped The Nation from printing excerpts from his unpublished memoir. But you must be old enough to remember when the producers of the television show Twin Peaks stopped publication of a Twin Peaks guide, or when the producers of Seinfeld stopped a company from publishing a book of trivia questions about the Seinfeld television series. (Talk about being re-gifted!) In these situations, the courts have done a pretty decent job of separating those cases in which the author is being exploited (not a fair use) from those cases in which the author is being explained (fair use).

As for using copyright law to crush the little guy, that knee-jerk characterization may apply in cases of RIAA smackdowns but misses the boat here. (If anything, the little guy, armed with high-tech copying tricks, has collectively done more to crush copyright than any megacorp — check out the many illegal Potters and the frivolous Muggles-related lawsuit.) The lexicon’s author knew what was at stake when he proceeded and even insisted on an indemnity clause — a provision that saved him from having to pay any attorney fees, damages, or court costs. (Kudos to his attorney.) Time-Warner and Rowling have been reasonable in permitting the free web-based version of the lexicon for years. The lexicon’s publisher understood the realities — the real money is made selling copyrighted units of content.

Dear Rich: I have a question. I know that old paintings like the Mona Lisa are not protected anymore, but I’ve heard that museums can still prevent reproductions of these paintings somehow. Is that true? How can that be? I’m so glad you asked. Yes, as a general rule, paintings that existed before 1923 are in the public domain and can be copied freely. However, museums have argued for years that their photographs of those paintings were protected under copyright, thus enabling them to control everything from postcard sales to artbook licensing. That ended in 1999 when a court ruled that “slavish reproductions” of visual works in the public domain are not copyrightable. (The photos may have required skill; but there was no originality.) In other words, you’re free to reproduce replicas of public domain artwork in the U.S. Of course, many museums still limit photographic access to paintings and on that basis, people who want high quality reproductions still have to seek permission — one reason why few people have seen this rare painting of Mona Lisa’s sister, Drea, (or so many of Mona’s other relatives).

Dear Rich: I have a question. My school is making me submit my term paper through a company called Turnitin.com. That company checks the paper against other papers for plagarism. That seems illegal. Don’t I have a right to not submit it through Turnitin? Isn’t it just like when people have a right to not take breathalyzer tests? I’m so glad you asked. As you’re aware, Turnitin.com is a repository for student papers and bills itself as “the standard in plagiarism prevention.” According to the company’s website, your paper will be compared to 15 million (or 40 million, depending on who you believe) papers that Turnitin already has on file.

One question that arises from the company’s use of student papers is whether it’s committing copyright infringement. The company says no, that it’s a fair use because they’re using the papers for a transformative purpose — catching cheaters. When students object to the practice, the lawyers for Turnitin.com respond that their website prevents copying by students — a goal of copyright law. Hmm. As to whether the practice actually is a fair use, we’ll have to wait and see what the courts decide, and at least one such case has been filed. (BTW kids, if you’re copying Dear Rich blog entries into your term papers, you have nothing to worry about; nothing’s been filed at Turnitin… yet.)

As for your right to not take a breathalyzer test, that’s a little bit out of the Dear Rich universe. However, since Rich once was required to edit books on motor vehicle codes, he can assure you that there is a downside to not taking a breathalyzer when requested. Many states have implied consent laws, which means that by getting a license, your consent to take a breathalyzer is implied, and if you don’t, you could be fined, lose your license, or get sentenced to time in jail. So think carefully before refusing a professor’s or police officer’s request.

Dear Rich: I have a question. I’m starting a literary website and I’d like to put up a lot of book covers. Do I have to get permission from the book publishers? I’m so glad you asked. Chances are you won’t have to ask for permission because of an exception under copyright law (17 USC Sec. 113(c)) that permits you to display pictures of product packaging “in connection with advertisements or commentaries” related to distribution or sales of those products. So, for example, if you provide links to an online retailer like Amazon where the books can be purchased, you will qualify under this exception. Ditto if you’re acting as a journalist and commenting on the book. By the way, this exception applies for any “useful article,” not just books. So it also applies to the cover of the “Crunch: Belly Butt and Thighs Bootcamp” DVD, the Pizza Party Elmo toy, and my super favorite new album.

Dear Rich: I have a question. Is it true that our church can’t show sporting events like football games on our big screen TV? I’m so glad you asked. Rather than give you a lot of legal backstory about non-musical works and copyright legislation (you can read about that stuff in this Slate article), the bottom line is that you’ll likely run afoul of the law if your church uses a TV screen larger than 55 inches. If you do “Drive 55″ you’ll need a public performance license. Of course, if your flock doesn’t mind mixing with infidels, you can move services down the street to a tavern with the appropriate licenses. Or you could just wear your fan gear to church and schedule services an hour later. I wish I had time to go into the relationship between contact sports and salvation — remember the first time an NFL player kneeled in prayer in the end zone? — but let’s save that discussion for our Sunday blog. P.S. Click here for information on how to measure your TV screen size.

Dear Rich: I have a question. I love movies but I hate all the sexy stuff — same with my friends. We have a movie club and before I show a movie, I make a copy in which I cut out all that stuff. Is that illegal? I’m so glad you asked. You are likely violating copyright laws. Of course, whether anyone will find out — another good reason not to ask Dear Rich questions — is a matter of conjecture. But should the owners of the films learn of your amateur editing, they could attempt to prevent your handiwork. At least, that’s our reading of a 2006 federal court decision. In that case, Marty Scorsese, Stephen Soderbergh, and Sydney Pollak (among other class-A directors) successfully sued Clean Flix, a company that edited films and then re-rented them. Even though the company purchased a separate copy so that studios didn’t lose any revenue in the process, a judge ruled that this practice was illegal. Currently, some companies are performing an end-run around this precedent by having a third party edit the copies. (Keep in mind, alas, that some companies who claim to rent “clean” movies, might not be so clean.) It is not illegal, however, under a recent law, to buy and sell a DVD player that filters the movie for you. In other words, you put your movie in the player and voila! No embarrassing shots of Jessica Alba! BTW, in addition to the legal issues mentioned, the showing of films for more than a small gathering of family and friends requires a public performance license. Anyway, if you can’t afford to buy a filtering DVD player, may we suggest you distribute these during those unpleasant moments?