Nolo’s Patent, Copyright, and Trademark Blog

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 purchased a web hosting package a few years back that included free website templates. When I created a different website, I used one of the templates, including the top photo. I just got a letter from a major stock photo company asking for $1,300 and to pay for a license or remove the image. I immediately removed the image, but I can’t afford to pay $1,300. I have all the documentation about the free templates. Do I have to pay $1,300 for something I thought was free? I’m so glad you asked. $1,300 for a website image? Wow! Here at Dear Rich headquarters we pay istockphoto.com about $1 for low res images (like the one on the left). In any case, you did the correct thing by immediately removing the image (and keeping the documentation). Hopefully, that demonstrates your good will.

There are a few things that may be going on here. Your original web hosting package may have included a permission to use the photo but that permission did not extend to other web hosting services. Or, perhaps the first web hosting arrangement never really got the proper permission, so wherever you use it, you’ll have a problem. The photo may have some digital watermarking embedded so that the stock photo company can trace all such uses and catch those who use it without permission. If you’re using it under the terms of the original webhosting agreement, you need to look to your agreement and your webhosts for resolution. If not, the stock photo company likely has a legitimate claim for infringement.

How far will they pursue it? It’s possible they could file a lawsuit, but that doesn’t seem practical or likely — they wouldn’t recover the costs of the litigation. Odds are good that if you write and explain your mistake — you mistakenly thought you had a license to use it — the whole thing will go away. They may send some more threatening emails, but the chances of anything going beyond that are unlikely. If I’m wrong (hard to believe, but it happens), let me know and maybe we can trigger a Streisand effect.

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. I read recently that Victoria’s Secret stole somebody’s design for a bra. I have a design for something similar — I don’t want to say exactly what it is, because it kind of gives away the idea. How can I stop someone from stealing it? I’m so glad you asked. I’m familiar with the alleged bra theft, though I don’t think it’s fair to say — at least not yet — that Victoria’s Secret violated the law. The woman claiming theft has a patent, but there are many ways to design around patents, and it’s always possible to argue that the woman’s patent is invalid. Alas, patent law is rife with misinformation regarding bra inventions, including the claim that Mary Phelps Jacobs invented the first bra in 1914 or that Herminie Cadolle of France invented it in 1889. (For those interested in the true story, I recommend Hoag Levins’ wonderful explanation of brassiere inventions in his book American Sex Machines: The Hidden History of Sex at the U.S. Patent Office.)

Can you stop someone from stealing your idea? You can take preemptive steps — one approach is to get a signed evaluation agreement (a modified nondisclosure agreement) before presenting your idea. The problem with that is that many big companies don’t want to sign them because they’re afraid it will prohibit them from developing similar ideas. Another approach is to seek patent protection. A patent — as in this situation with Victoria’s Secret– gives the owner a hunting license to pursue infringers. If you’re not sure about investing time and money in the full patent application, you can reserve your place in line at the Patent Office by filing a provisional patent application for $105. Nolo offers books and software to prepare a provisional application. And remember, whatever you’ve invented, please consider the safety issues.

Dear Rich: I have a question. I’ll be using a lot of screenshots from different websites in my book. Do I need to get permission for that or is it a fair use? I’m so glad you asked. Conventional wisdom (and the Electronic Frontier Foundation) says that an unauthorized screenshot is an infringement. That said, the use of screenshots rarely triggers a complaint because either: (1) the copyright owners don’t want to complain about something that promotes their company — for example, an online tutorial about using Microsoft Word, or a book about starting an eBay business, or (2) the copyright owners believe the use is likely to be excused as a fair use. Although issues don’t often arise, occasionally copyright owners do complain — for example, Apple complained about pre-release screenshots of the iPhone. Some sites place limits on your use of screenshots in their user agreements.

Keep in mind that if the copyright owners do complain, the results can be unfortunate–it may disrupt publication of a book or other product. Perhaps a more important issue to consider is whether what you are doing is likely to anger or annoy the copyright owner. If it is, proceed with caution and review your use of the company’s trademarks so that your use doesn’t imply an association or endorsement.

P.S. In the future, sites will be able to block screenshots.

Dear Rich: I have a question. I got a cease and desist letter from a law firm and I’d like to post it on my website so the world can see what a jerk this guy is. Is that legal? I’m so glad you asked. Publishing cease and desist letters on the Internet is not uncommon and there are even searchable C&D databases (in case you need help writing one). Lawyers rarely object to the practice either because they don’t want more attention, or because they’re aware that they’re on tenuous first amendment or fair use grounds. However, some lawyers throw caution to the wind and plunge ahead with attempts to stop republication of their C&D letters. (You can read this lawyer’s original cease and desist letter (.pdf) and a well-reasoned response to it by Public Citizen (.pdf).) If faced with an overly assertive law firm, keep the following in mind:

1. Getting a certificate of copyright registration for a cease and desist letter is not very hard. The hurdles for federal registration are fairly low and a cease and desist letter may meet those standards.

2. Enforcing copyright in C&D letters is difficult because of the merger doctrine. Copyright law will not protect a work if there are a limited number of ways of expressing the underlying idea. (And how many ways are there to say cease and desist?)

3. Reproduction of letters may be permitted under fair use principles. Infringing activity is often permitted for the sake of commentary and/or criticism.

Anyway, I certainly hope nobody puts a chill on republication of C&D letters. They are a great source of amusement and sometimes a matter of national security. And, for lawyers like me, it’s often the only way to get published.

Dear Rich: I have a question. I would like to create an online game that is similar to a popular board game. How I can do this without getting sued? I’m so glad you asked. Initially, I must remind you that there is no sue-free solution to anything. Anyone who can afford a few hours of a lawyer’s time and some filing fees can sue you. However, what I think you’re asking is: How do I lower the odds of being sued and reinforce the chances of victory in that lawsuit?

Start with the principle that the underlying ideas for games are usually not protected. For example, many companies have created online games based on hangman, but you’ll run into a problem if your hangman game is expressed in the same way as Wheel of Fortune. To lower the odds of becoming a defendant in a lawsuit, do the following:

Don’t use a name that’s similar to a popular game. Stepping on the trademark of a game (particularly a famous one) is a surefire way to get dragged into court (although, occasionally the results are suprising).

Avoid copying the appearance of the packaging. Game companies feel the same way about their trade dress as they do about their trademarks (Just ask the makers of Sexual Pursuit).

Don’t copy text or artwork from the game. In that case you’ll be stepping on someone’s copyright and unless your use is excusable under fair use or similar principles, judges may not be sympathetic. However, the copyright in some board games, such as Scrabble, may be ‘thin’ and harder to protect.

Check to see whether the game is patented. Yes, some games are protected under utility patent and design patent laws. Patent infringement lawsuits are a real drag, so check it out before your game goes live.

Move to a country where it’s unlikely the game company will want to sue you. Unfortunately, in today’s global village, that’s becoming harder and harder to do.

Dear Rich: I have a question. I am a romance novelist and occasionally I borrow material from other books for my historical romances. I read yesterday’s question discussing cookbooks and I’m still confused about the difference between plagiarism and infringement. I’m so glad you asked. A plagiarist is a person who poses as the originator of words he did not write, ideas he did not conceive, or facts he did not discover. “Plagiarism” is not a legal term; it’s an ethical term. You can plagiarize someone without infringing. For example, if a plagiarist only copies public domain materials, he can’t be sued for copyright infringement. And you can infringe without plagiarizing. For example, this whole answer is pretty much lifted from chapter 14 of Stephen Fishman’s book, The Public Domain. (See … I’ve provided attribution; let’s hope he doesn’t sue– :-)). Which is worse? A whiff of plagiarism can damage a romance novelist’s reputation, while infringement means dealing with lawyers and hefty judgments.