Category — Legal
The New Patent Law
By Mark Levy, Esq.
A new law, called the America Invents Act (AIA), was enacted on September 16, 2011. It is the most significant revision to the U.S. patent law in almost 60 years. Although the new law includes a number of changes, the most significant ones are discussed below.
Race to the Patent Office
Under the new law, no longer does it matter who invents a patentable idea first, but who files a patent application in the U.S. Patent and Trademark Office (PTO) first. This is a major change from the way inventions have been protected up to now, and it brings the United States patent law in alignment with most of the other 140 countries that have patent offices. This “first to file” part of the AIA goes into effect 18 months from the date of enactment (i.e., March 16, 2013).
Much of the rest of the patent statute remains substantially the same. For example, to be patentable, your invention must be new, useful, and not obvious over the prior art. Also, you, the patent applicant, must be the true inventor. That is, you cannot file a patent application on someone else’s invention and, if you include one or more others as inventors, each of them must have contributed to the invention, too. Likewise, you cannot exclude someone who did contribute to the invention.
You cannot publicly disclose the invention or put it on sale more than a year before you file your application. If you know of pertinent prior art, you must inform the PTO. This is called the duty of disclosure and the PTO takes it very seriously, since it does not have the resources to determine these types of facts independently.
What the new law means is that time is now of the essence. If you are going to file a patent application, do it sooner rather than later. Do not procrastinate.
Some commentators believe that this new provision in the patent law will benefit corporations at the expense of individual or independent inventors. Frankly, after working as in-house patent counsel for a number of Fortune 500 corporations, I am not convinced that the companies will always have an advantage. I believe that the new law may help independent inventors, as long as they and/or their patent counsel are responsive to their interests. It is not unusual for a large corporation to file a patent application many months or even years after receiving a disclosure from one of its engineers or scientists. This is due to the burdensome bureaucratic analyses and procedures that such corporations have developed. In a way, this new provision actually levels the playing field, at least in some respects, between independent inventors and major corporations.
Fees Have Increased
Here’s a surprise: as part of the new law, the PTO has increased a number of fees, effective immediately. For example, the fee for filing a utility patent application for a small entity is now $625 and the issue fee for a utility patent application is now $870. Stay tuned for further fee increases. For independent inventors, now called “micro entities,” however, the fees are half of the small entity fees. To qualify for micro entity status, you must state that you are not named as the inventor on more than four applications and you do not have a gross income exceeding three times the reported median household income. If an institution of higher education employs you and you signed an agreement to assign your rights to the college, you also qualify as a micro entity.
False Marking of Products
Until now, any person (e.g., you) could bring a lawsuit against a company that printed an incorrect or expired patent number on its products. The federal government would share damages with you, the plaintiff, up to $500 per product. But the new patent law has changed that. Only the federal government can now bring such a lawsuit. And if you wish to bring a civil suit now, you must be a competitor of that company and show that you suffered competitive injury due to the deceptively false marking. Also, you can take no legal action if the patent number printed on the product(s) has expired. The change in the law occurred because a person (a Washington patent attorney, as a matter of fact) sued Solo Cups for damages that might amount to trillions of dollars because the company marked some 21 billion paper cup lids with an expired patent number. The lawsuit sounded like such a good idea to many other clients and their lawyers, over 500 other federal lawsuits were brought last year against miscellaneous manufacturers under the same patent statute. Congress thought the potential penalty for Solo Cups was extreme and unfair, and things were getting out of hand, so it eliminated the opportunity to make such a windfall profit.
About the author:
Mark Levy is an attorney with the Binghamton-based law firm of Hinman Howard and Kattell. He is a contributing editor to ragazine.cc of a legal column (Feeding the Starving Artist), and is Ragazine’s “Casual Observer”. He is an occasional contributor to NPR, where his comments can be heard some Saturdays at noon. email: email@example.com and firstname.lastname@example.org
October 27, 2011 Comments Off on Feeding the Starving Artist/Legal
Connecting the Dots
An Interview with
Drug Policy Alliance’s Tamar Todd
By Don Ruben
On assignment from Ragazine editor Mike Foldes, I conducted a telephone interview August 19, 2011, with Tamar Todd, staff attorney at the Drug Policy Alliance (DPA) office of legal affairs in California. She was referred to us by the national office of DPA as the point person involved in litigation, legislative drafting, and public education advocacy involving medical marijuana, marijuana decriminalization, and legalization initiatives across the country.
The Drug Policy Alliance was formed in July 2000 when The Lindesmith Center, an activist drug policy think-tank established in 1994, merged with the Drug Policy Foundation. More history on all three organizations is available at:
Sixteen states and the District of Columbia have adopted medical marijuana laws, but the Obama administration continues to follow the failed policies of the Bush and Clinton administrations, evidenced in this exchange at a town hall meeting in Cannon Falls, MN, earlier this year: A citizen asked, “If you can’t legalize marijuana, why can’t we just legalize medical marijuana, to help the people that need it?”
Obama responded, “Well, you know a lot of states are making decisions about medical marijuana. As a controlled substance, the issue then is, you know, is it being prescribed by a doctor, as opposed to, you know—well—I’ll—I’ll—I’ll—I’ll leave it at that.”
There’s a lot more at stake than the president seems to understand. Marijuana properly dispensed and regulated for medical use is legal in 16 states and DC, but it’s still illegal under federal law. Many believe the feds under Obama have been heavy handed, suggesting to state bar associations that private lawyers representing medical marijuana dispensaries are committing ethical violations because although MM may be legal in their states, it’s still a federal violation, making those private lawyers, in effect, participants in violating federal law. There is evidence that the feds urge state law enforcement to be extra vigilant in making sure that the MM (medical marijuana) legal guidelines are followed.
The interview that follows has been edited for clarity and length.
DR: For our readers, I would like to briefly talk about the mission of DPA. I have read your web site, www.drugpolicy.org and find it very informative and interesting.
TT: Thanks. We have recently revised the website and I’m very happy with it.
DR: It appears that DPA is more like a think tank than an activist organization like the National Organization for the Reform of Marijuana Laws (NORML).
TT: We still have a think tank component, but we’re trying to become more directly involved in direct action work and litigation. We do put out booklets and information materials relating to different aspects of drug policy. Our headquarters is in New York City, and we have offices in five states (CA, CO, NJ, NM, and NY), with the office of legal affairs in California. Most of our legal litigation has been done in conjunction with the American Civil Liberties Union (ACLU) and their drug justice section.
One of the main goals of DPA is ending the unjust drug policies because of discriminatory emphasis on Blacks and Latinos. We feel there is social injustice in the unequal arrest of these minorities that not only results in prison time, but also leaves them with a conviction and record which further impedes their getting employment. It is our belief that although Whites use marijuana in about the same numbers as Blacks and Latinos, the arrest rates are entirely different and we want to address this injustice. We have partnered with the NAACP (National Association of Colored People) in this regard.
DR: Let’s turn our attention to medical marijuana. MM is now legal in 16 states and the District of Columbia.
TT: We are working and making our resources and help available to persons trying to get MM on the ballot in others states. We are definitely trying to be more active in this area. (DPA executive director) Ethan Nadelmann calls us a ‘connect the dots’ organization. We try and bring together several different organizations who are working on different aspects of the war on drugs.
DR: In 2008, candidate Barack Obama pledged that if elected, his administration would not use the Department of Justice (DOJ) resources to circumvent state laws on MM. Yet in June of 2011, President Obama’s DOJ issued new guidelines for US attorneys in a document known as the Cole memorandum. Didn’t Obama miss a key opportunity to clarify the state/federal conflict over MM? Instead of paving the way for responsible regulations in 16 states and D.C., the Cole memorandum brought more confusion and obstruction of state’s rights. What is your opinion of these new regulations, especially with regard to large growers?
TT: I understand and agree with you. The President has certainly failed to clarify the situation. The recent Cole memorandum from DOJ seems to agree and also disagree with the original Ogden memorandum saying Federal government would be hands off if dispensaries and growers followed state law guidelines. It definitely has a lack of clarity and there is almost a passive-aggressive policy by US attorneys. They send letters to state legislatures and governors in states considering MM laws and then tend to back off. Yet, in Washington State recently, one letter from a US Attorney was sufficient to give the governor the go ahead to veto the MM law. The President is certainly being very political. He sort of says one thing and yet the DOJ and US Attorneys know they can do what they have been doing and not get called on it.
DR: At the 2010 December NORML lawyers conference in Key West there was much discussion of how some state bar associations, at the urging of US attorneys, are warning private lawyers that it’s unethical to represent dispensaries — even in states with MM laws — because under federal law, marijuana is still illegal and a crime. This happened in Arizona and NORML lawyers have formed a committee to challenge it.
TT: I know, and I think it is also the case in Maine. But in California you can get CLE (Continuing Legal Education) credit for learning how to do it properly. Again, there is a lack of clarity.
DR: Recently the Obama administration flat out rejected the notion of even allowing hearings on marijuana’s federal schedule 1 classification. Schedule 1 means there is no valid medical use for marijuana. Drug Enforcement Administration (DEA) administrator Michelle Leonart denied a 9-year-old petition for hearings to reassign classification, an issue central to MM. The current schedule indicates marijuana has no redeeming value at all, although most medical professionals disagree.
TT: There is no science, reason, or compassion for such a stance. It’s all political. I don’t know anyone in the field who would agree with Leonart with a straight face. It’s policy based on political concerns by Obama without regard to any scientific proof.
DR: I think that Obama’s choice of Leonart as DEA chief is no different policy-wise than (choices) under Bush or Clinton.
TT: As I said, it must be based on some political calculation on his part, but I certainly don’t understand or agree with it.
DR: This year marks the 40th anniversary of the war on drugs, started by Nixon in 1971. It seems to many that ending prohibition and using the alcohol/tobacco regulate-and-tax model is the way to go. I clearly separate MM and the recreational user of cannabis. I think that ending prohibition would serve both of these users. I know that DPA is four-square behind ending prohibition.
TT: Yes, it’s the policy position of DPA that ending prohibition is the best way to effectuate MM policy. This would provide the best way to put patients’ needs first and also provide the best way to allow for scientific research into the use of marijuana for all kinds of medical needs. Also, as I have alluded to earlier, the social justice component is very important with regard to the arrests of blacks and Latinos. Ending prohibition would serve both groups. I think it’s important to support the federal bill sponsored by Barney Frank and Ron Paul for ending federal prohibition and leaving it to the states, similar to ending alcohol prohibition.
DR: I totally agree. Let me turn to Prop 19 in California. I know that DPA supported it and I also worked for its passage. Why do you think it narrowly failed, and what are the prospects for success in the future when it’s brought up again in 2012?
TT: I think we are at a tipping point similar to the issue of same-sex marriage. Also, 2010 was a non-presidential year and so not that many young people voted who tend to be liberal. I also felt that there is a profit question which must be addressed. The big dealers in, say, Humboldt county felt if (MM were) legalized, their profit would go down. Also, many in the MM business felt their profits would also be affected.
DR: Obviously, illegality creates higher prices. I think this can be addressed. I also believe, from my work on the issue, that voters have to understand that a person in California who has a MM prescription would be subject to criminal prosecution if they brought M to a state such as Ohio, where it is illegal. When the Prop 19 folks had a sounding board after the election, these issues were discussed as well as the fact that money from Soros and others came in too late. I agree that 2012, with a larger turnout and a better campaign, could prove to be a winner. I agree with Keith Stroup of NORML that the right to smoke cannabis is grounded in the constitutional right of privacy. How do you view it?
TT: I find the constitutional argument interesting. We at DPA view as part of our mission that the sovereignty of the individual over what they put in their body absent harm to others is the guiding principle.
DR: In conclusion, I say legalize, regulate, and tax.
TT: I agree.
DR: On behalf of Ragazine and myself, I thank you for taking the time for this interview and I wish DPA continued success.
TT: Thank you. If you have any further questions don’t hesitate to call or e-mail me.
Interviewer’s Note: I hope readers will take a moment to view an excellent video by DPA director Ethan Nadelmann, responding to the outlandish DEA claim that marijuana has no accepted medical use. Click here.
I believe that President Obama has reversed his campaign promises on MM and has followed the unscientific and uncompassionate views of the two Bushes and Clinton. He has failed to resolve the state/federal conflict and has allowed his DOJ and US attorneys to use their power to prevent states from adopting sustainable public policies for MM. I voted for Obama in 2008 and will not be supporting his reelection in 2012. – DR
About Don Ruben: Ruben has been criminal defense lawyer for more than 40 years. He is a former assistant county prosecutor and served as an assistant attorney general under William B. Saxbe. He is a member of NORML’s legal committee and supports an end to cannabis prohibition.
September 10, 2011 Comments Off on Stirring the Pot/Legal
… (Almost) Forever Theirs …
by Mark Levy and Nick Andreadis
If you watch the news on a regular basis, chances are you have seen a YouTube video as part of a news story. For those unaware, YouTube is a video sharing website owned by Google. Users can upload and share their videos. As it happens, “YouTube video” is somewhat of a misnomer, as YouTube does not create or own the videos on its site. YouTube is simply an online hosting site for a collection of user videos, recorded by many thousands of different people all over the world. But what happens when one such video gains national attention via TV news outlets? When such a video is on the news, there is usually a credit in the corner of the video acknowledging that the video was found on YouTube. This begs the question, however, “What about the video’s creator? Doesn’t he or she deserve credit?” The answer, according to YouTube, is a simple one: no.
In YouTube’s terms of service, which every user must accept before uploading a video, the rules are stated very clearly. “By submitting User Submissions to YouTube, you hereby grant YouTube a worldwide, non-exclusive, royalty-free, sublicenseable and transferable license to use, reproduce, distribute, prepare derivative works of, display, and perform the User Submissions in connection with the YouTube Website.” In layman’s terms, by submitting content to YouTube, you are giving Google permission to use your content however it pleases.
It is important to remember that the majority of YouTube’s profits come from advertising. Therefore, the more exposure YouTube gains, the more money Google will make. To put it in perspective, it currently costs $175,000 dollars a day to advertise on the front page of YouTube. This number can be expected to rise as YouTube becomes even more popular. You can now see why it is imperative that YouTube be able to distribute a user’s content without specific permission by the owner. This necessity for promotion leads us to another interesting phrase in the YouTube terms of service. “You agree not to distribute in any medium any part of the Website, including but not limited to User Submissions (defined below), without YouTube’s prior written authorization.” This states that no one may use any content from YouTube without Google’s permission. This prevents news agencies from using a video hosted on YouTube without obtaining written permission, therefore ensuring that Google always receives credit for YouTube videos.
Interestingly enough, YouTube takes care to state in its terms of service that the user who submits the content still “retains all ownership rights to the content.” Legally, there is very little difference between a license owner and a content owner. Therefore, while YouTube does not technically own the user content, it has essentially the same legal rights to the content’s distribution and reproduction as the owners do. However, by allowing the content creator to retain ownership rights, YouTube can avoid liability for the content. The terms of service state, “You shall be solely responsible for your own User Submissions and the consequences of posting or publishing them.” This allows YouTube to reproduce and distribute the content as it sees fit while avoiding liability.
There is a fourth section of the terms of service that, while not expressly related to distribution rights, is interesting to note. “The above licenses granted by you in User Videos terminate within a commercially reasonable time after you remove or delete your User Videos from the YouTube website… YouTube may retain, but not display distribute or perform, server copies of User Submissions that have been removed or deleted.” Essentially, YouTube has the right to keep copies of uploaded videos on its servers forever, even if the user “deletes” them and cancels his account. YouTube may also continue to use the video for a “commercially reasonable” amount of time. This could potentially lead to a user video being used in promotional material for YouTube, even after the creator has deleted it.
While some of these terms may seem overbearing, or even an invasion of privacy, they are far from unusual. Veoh and Vimeo, two other popular video sharing websites, recite almost identical terms of service. While one may be inclined to view this negatively, there are some positives as well. For example, in June of 2009, rioting broke out in Iran over presidential elections. Iran has a state controlled media, and did not report the riots. However, due to the proliferation of video enabled cell phones and YouTube, news agencies all over the world were able to report on this story. It would have been almost impossible to obtain permission from these users before reporting on the story, and if these terms were not in place an important event would have gone un-noticed. YouTube and sites like it are becoming more and more a part of mainstream media. Regardless of your individual opinion of them, these terms are here to stay, and you should be aware of them before posting a video or even a comment on YouTube.
About the authors:
Mark Levy is a contributing editor to Ragazine. He is an attorney with the Binghamton law firm of Hinman, Howard and Kattell.
Nick Andreadis is a legal intern for Mark Levy. He is an Industrial and Systems Engineer at Binghamton University planning on going into Intellectual Property law.
July 1, 2011 Comments Off on Feeding the Starving Artist/Legal
in the Intellectual Property Wars
Presented in the this month’s edition is a piece sent in by Leon Tan. It’s a twist on the integration of art, power and politics – a relationship not always complementary, and one with us as long as we humans have been entertaining any notions of society. The details and nuances of the relationship tend to tell us a significant amount about what is and isn’t happening in our times, and Tan’s submission is no exception. So take a read and let us know in your low or high brow opinion the thoughts that his piece evokes. And keep an eye toward the September/October edition, as we will be featuring another ‘art to politics’ article with a focus on the musical group, The Rooftop Revolutionaries.
— Jim Palombo, politics editor
by Leon Tan, Ph. D.
The painting, Darfunica, by Danish artist Nadia Plesner (based in the Netherlands) is conceived in homage to Picasso’s 1937 painting Guernica. It is also an expression of political claims by the artist, who makes the point that the obsession with Hollywood celebrities in popular news media means that genocide in Darfur (or any number of places) could take place without even making the headlines. Plesner finds this situation unacceptable, explaining her painting as follows: “In Darfurnica I have mixed some of the horrible stories I have learned about Darfur over the past years with some of the Hollywood gossip stories which made headlines during the same time period.” The idea, it seems, is to juxtapose the luxury world of Hollywood celebrity with the horrors of Darfur’s ongoing civil war.
Darfurnica came to my attention only because of my interest in issues of copyright. As it happens, the artist and work are at the centre of a legal battle initiated by LouisVuitton, who objects to the bag being carried by the boy in the middle of the painting. Louis Vuitton alleges that the use of the LV pattern on the bag constitutes infringement of its intellectual property rights. On 27 January 2011, Louis Vuitton obtained an ex parte court order against Nadia Plesner from the Court of The Hague.
On her website (http://www.nadiaplesner.com/), Plesner counters Louis Vuitton’sclaim by asserting that the court order violates her rights to free speech and artistic freedom under Section 10 of the European Convention of Human Rights (ECHR). In this case, Plesner is correct, as Section 10 does in fact guarantee freedom of expression, which specifically includes non-interference by public authorities. In fact, the court order also violates Articles 18 and 19 of the Universal Declaration of Human Rights, not to mention the right to participation in cultural life specified in the International Covenant on Economic Social and Cultural Rights (ICESCR).
Conveniently ignored until very recently in the contentious politics of intellectual property, the conflict between intellectual property legislation on one hand, and human and cultural rights legislation on the other, deserves greater scrutiny. For legal institutions have in the main apparently forgotten the existence of such rights and frameworks under continuous lobbying pressure from ruthless corporate oligopolies. A related case in Sweden involves the Swedish government prosecuting organizers behind The Pirate Bay, under direct pressure from the U.S. government and a predominantly American media oligopoly (Tan, 2010). At no time did the Swedish court pause to reflect on its own violations of international frameworks such as the UDHR and ICESCR, not to mention the ECHR.
As a matter of fact, ‘The Committee on Economic, Social and Cultural Rights has previously recommended that every state conduct a general human rights impact assessment of their IP regimes.’ (Shaver and Sganga, 2009) No mention has yet been made by the courts in either the Netherlands or Sweden of any such assessment. It is timely therefore, for legal institutions to educate themselves concerning their own obligations under the aforementioned frameworks for human and cultural rights, and to cease delaying rigorous human rights impact assessments on national, regional and international intellectual property frameworks. In the meantime, it is encouraging to see that Plesner filed her own lawsuit against Louis Vuitton to have the order lifted.
Leon Tan, ‘The Pirate Bay: Countervailing power and the problem of state organized crime,” CTheory: Theory, Technology and Culture, 2010, 33(3).
Lea Shaver and Caterina Sganga, ‘The right to take part in cultural life: On copyrightand human rights,’ Wisconsin International Law Journal, 2009, 27.
About the author:
Leon Tan (PhD) is an Art Historian specializing in aesthetics, social theory, contemporary art, and the history of networked art and media. He previously lectured in Art History and Psychotherapy in New Zealand, before relocating for part of the year to Sweden in 2009.
June 28, 2011 Comments Off on Leon Tan/Politics, Art & Law
Right of Privacy
by Mark Levy
A major right of citizens in America was not guaranteed or even mentioned in the U.S. Constitution. Can you guess which right that is? If you guessed the right to text, you are correct, but it’s not the one I am referring to. It’s the right of privacy that was not included in the Constitution.
But during the last 220 some odd years, our laws have evolved due to congressional actions and court decisions. A number of cases have relied on some form of the right of privacy, even if not explicitly stated, from actions in slander and libel and paparazzi behavior to actions relating to a woman’s right to terminate her own pregnancy.
It wasn’t until the invention of photography that cases involving the right of privacy got into high gear. With camcorders, cell phones, and the Internet (e.g., Facebook and Youtube), of course, now it’s difficult to get through a week without a scandalous case coming to light.
One of the more interesting and higher profile cases occurred in the early 1970s, when a newspaper salesman named Duncan Murray attended a St. Patrick’s Day parade wearing an Irish hat, a green bow tie, and a green pin. He was not Irish, by the way. A freelance photographer took Murray’s picture without his consent and sold it to New York Magazine. The photo was printed on the magazine’s St. Patrick’s Day cover two years later, under the title of a feature article, “The Last of the Irish Immigrants.”
Murray sued the magazine for invasion of privacy. On appeal, the case was dismissed, and here’s why.
Most states have a privacy law nicknamed “the right to be left alone.” When you take a photograph or shoot a video, you have to be concerned with the law of all states where the work might be shown, displayed, or published, not just where it was made.
The privacy law states that “any person whose name, portrait, or picture is used within the state for advertising purposes or for the purposes of trade without… written consent… may [sue] to prevent and restrain the use thereof; and may also sue and recover damages for any injuries sustained by reason of such use.”
The court in the Murray v. New York Magazine case agreed that the privacy law prohibits the use of any picture for advertising or trade purposes without written consent. But a picture illustrating an article is not considered used for trade or advertising unless it has no relationship to the published article. Merely because a publisher seeks to make a profit from his newspaper or magazine or web site does not make it a trade purpose.
In this case, Murray was dressed in striking attire to celebrate the occasion. He voluntarily became part of the spectacle – part of the newsworthiness. So Murray’s right of privacy was not absolute; it was limited. The lesson is, the more outlandish the person’s clothing or actions, the safer you are photographing him or her without written consent. Similarly, you are safer photographing a well-known public figure than an unknown person.
Courts try to balance a person’s right to be left alone against the public’s right to knowledge and information. Courts call this principle a privilege that protects newsworthy subjects.
As a matter of fact, courts lean over backwards to give the public unimpeded access to news and free dissemination of truth. Only when you act in reckless disregard of the truth, or in bad faith, will you be liable for invading privacy when you photograph a newsworthy event.
Mark Levy is an attorney with the Binghamton-based law firm of Hinman Howard and Kattell. He is a contributing editor to ragazine.cc with Ryan Miosek (Feeding the Starving Artist), and an occasional contributor to NPR, where his comments can be heard some Saturdays at noon.
May 1, 2011 Comments Off on Feeding the Starving Artist
At the Wedding, Make it Legal
Answers for the Commercial Photographer
by Mark Levy
With well over two million wedding ceremonies taking place annually in the United States alone, it is not surprising that the wedding industry is still healthy, in spite of the state of our dismal economy. From wedding planners to gown designers to caterers to florists, most parts of wedding productions seem to be surviving, if not thriving. That is also the case for photographers, both still and video.
Along with the opportunity to be part of this profitable business come responsibilities and potential liabilities. This article outlines some of the legal pitfalls you should know when embarking on or continuing to pursue a wedding photo career, a part-time job, or an avocation.
As with many areas of the law, the chances of running afoul of rules and regulations and of having to make reparations are generally small. Nevertheless, knowing where the mines are in the minefield is always a good idea and helps minimize your exposure.
Write in plain English, not legalese. Short sentences are best. Once you have drafted an agreement, consider making it a form that you can use for future events with different parties. You can modify or revise your form agreement for future use, as different situations arise. This, by the way, is how lawyers work: they often start with a previous document written by themselves or others, and customize it for the present parties and situations.
The agreement with your client, known as an “event agreement,” should cover standard terms and conditions found in any contract, such as: names and addresses of the parties (your client and you); time and location of the event; work to be performed; and materials to be delivered to your client, including as many specifics as you can recite. These specific terms can include:
a) the time and place of the event and the duration of your participation in the event, with an extra fee for time you spend above and beyond the agreed-upon length of time at the event;
b) the number of photos for the album(s) or the length of the final, edited video;
c) whether you will record the wedding ceremony, the reception, or both;
d) how many copies of the albums or final video will be delivered and in what medium;
e) when and where you will deliver the album or video;
f) music, still photos, or other materials to be provided by your client, by you, or by both of you;
g) the fee you are charging, including the amount of down payment and any applicable taxes, and when the fee is to be paid as a lump sum or in installments;
h) excuses for your non-performance due to acts of God (e.g., natural disasters) or other unforeseen events, such as illness, labor strikes, etc., called “force majuere”;
i) your cancellation and refund or partial refund policy if the wedding does not occur;
j) penalties for non-performance, if any;
k) the jurisdiction in which litigation or arbitration will be conducted if a dispute arises that cannot be resolved solely by you and your client;
l) warranties by your client and by you;
m) an indemnification by your client to release and agree to protect, save harmless, and defend you from law suits of any nature;
n) copyright ownership;
o) your storage policy for original tapes or cards or negatives or files for archival purposes; and,
p) the amount of wedding cake you and your staff will be entitled to. (Seriously, if you require food and drink for your staff or you, which is not normally included in this type of agreement, be sure to specify that requirement with your client in writing, too.)
If you are shooting a video, you will want to use another agreement with the live band or DJ. This agreement should include a warranty clause stating that the performers have the right to play the music they will be performing. An indemnification clause protecting you from lawsuits for copyright infringement would also be a good idea. The agreement should also grant you a sub-license — technically, a synchronization license, so you can include the music you record with the video images you take. This sub-license should expressly allow you to video the performance and event, edit it, and display it in limited distribution video copies and/or on Internet sites.
A permit for shooting at the church, hotel, city hall, or park will not be necessary, as long as your client has arranged with those places to hold the wedding event there. Allowing photographers and videographers to work during the event is either explicitly included or implicit in the agreement between your client and the owner of the venue. You may want to ask for a copy of that agreement to see if any special restrictions are recited that can affect you.
Finally, you will want to enter into a separate agreement with each of your outside contractors or employees, if any. This agreement should be used for all of your projects, so you will not have to re-create it for every occasion. To be complete, this agreement should also include the rate of pay for each participant, the work to be performed by your assistant, taxes to be withheld, a code of conduct before, during, and after the project, and copyright assignment to you of the work your assistant creates.
For samples of any of these agreements or to get ideas of other terms and conditions in agreements, search them on the Internet.
As a matter of decorum, protocol, courtesy, civility, and common sense, rather than strictly legal considerations, be as unobtrusive and non-disruptive as possible during the event. That means not imposing your equipment or yourself in places or at times that are inappropriate. For example, even though, as a photographer or videographer, you may want to include a scene of the bride getting dressed before the ceremony, you may have to forego those shots if the bride would prefer privacy. Similarly, if a particular camera-shy guest prefers not be in the album or video, respect his or her wishes.
As you know, using photo releases for people who appear in your photos or video are a good idea for a certain type of movies, but this is not one of them. For starters, it would be a logistical nightmare to have every one of hundreds or even dozens of guests read and sign releases. But legally, most everyone is expected to know that photographers are likely to roam freely around the ceremony and reception venue. They also can be confident that your album or video will have very limited distribution, online video sites like YouTube.com being the exception nowadays. Impliedly, therefore, in court you can argue that all of the guests and the wedding party (the principals) have consented to being photographed or videoed merely by attending the event.
Nevertheless, refrain from shooting subjects who are performing private activities. (Scratching and picking come to mind, as does erratic behavior or unconsciousness due to intoxication.) Those occasions that subject the guests or principals to ridicule may give rise to lawsuits against you based on invasion of privacy, however unlikely that may be.
One way to ensure that your video or images are “clean,” is to send a copy to your client before finalizing it or making copies. The risk, of course, is that the client may demand significant revisions to your work, requiring much more time than you budgeted. You might want to cover this contingency in your agreement with your client.
In the credits or end of the album, be sure to display your copyright notice:
© Your Name 2011. This notice grants you certain rights, while providing free advertising.
As you may have heard, businesses routinely use the Internet to show credibility and to publicize the services they render. If you hire a web designer to develop your site, you may find that you do not own what you think you do. Often, companies learn this lesson the hard way, when the web designer refuses to allow the website to be copied or used as a template for another site. Or worse, sometimes the web designer attempts to extort the very party who has paid him or her.
How can his happen? After all, you paid cash for the development. You may have entered into an agreement, prepared by the web designer, that spelled out your designer’s duties and obligations. It does not seem logical or fair that you would not have complete ownership and the right to use the website materials any way you wish. It may not be fair, but unfortunately, it is legal.
The U.S. Constitution that went into effect in 1789 states that Congress has the power to secure for authors for limited times the exclusive right to their writings. This provision was to protect the individual artist from unfair copying of his or her creative work. The original Copyright Act, pursuant to the U.S. Constitution, was enacted in 1790.
The Copyright Act lists an ever-growing number of “writings,” now called “works of authorship,” that are protectable under our copyright law. Under the original Act, and surviving to this day, is the clause, “the owner of copyright… has the exclusive rights to do and to authorize” a number of activities, including reproduction of the work and preparation of works that are derived from the original.
This statement cuts two ways for you: as the creator of an album or video, you automatically own the copyright to your photos or video of the wedding; but as the owner of a website, you do not automatically own the copyright to the work that your website designer creates. In the first case, your client pays you for your work, but since you performed the work, it is you, not your client, who automatically owns the copyright to it, unless you have a written agreement to the contrary. In the second case, although you pay your website designer, you do not automatically own the copyright to the work that appears on the site.
Case law has settled the question (for now), holding that as mentioned, absent a written agreement to the contrary, the individual who creates the work is the owner of the copyright.
You may provide all of the text and images for your website, and even give the web designer detailed directions to arrange those images and text on the computer screen. Even though you agree to pay the designer for his or her services, it is still the web designer who owns the copyright to the work.
A written agreement signed by your designer and you can take care of the situation. If both parties agree that the work is a “work made for hire,” courts will generally decide that the designer has created a work whose copyright rights are transferred to the entity that commissions him. These four magic words —— work made for hire —— when included in a written agreement, allows you, as the entity that commissions the work, to own the copyright rights. A well-drafted copyright assignment agreement should include a clause that expressly assigns the work to you, regardless of whether the court rules that the work was one made for hire.
Needless to say, it makes sense to reduce your agreement for website design to writing before you make a payment and the work begins.
You may want to investigate three types of insurance. In the order of importance and least cost first, a general liability insurance policy protects you against any mishaps by people who attend the ceremony and/or reception. The common sorts of mishaps include injury to visitors due to your or their negligence. For example, lights can come crashing down or cables can be tripped over, injuring the guests and, of course, damaging your equipment. Accordingly, you may wish to obtain a business owner’s policy (BOP) to cover those events.
Along with the BOP often comes a workers compensation policy to cover your employees, if any. Depending on the state in which you do business, you may also be required to have a disability policy, which protects your employees and is a requirement at this time in California, New York, New Jersey, Rhode Island, and Hawaii.
Another policy that is more expensive and less popular is a professional liability policy that covers errors and omissions. This policy protects you against any legal action that can be brought against you by dissatisfied clients (“Oh, you didn’t mention that you wanted the video with sound!”) or by others who appear in your final work.
Finally, much more rarely, you may wish to investigate an insurance policy that protects you against infringement of intellectual property, such as copyright infringement and trademark infringement. There may be no need for the infringement policy if you include an indemnification clause for such legal actions in your agreement with your customer (see above). The last two types of insurance may be combinable; talk to your friendly insurance agent for details and costs.
Incorporation or Limited Liability Company
Insurance companies are sometimes reluctant to issue policies to individuals, so forming a corporation or limited liability company (LLC) may be advisable. If you decide not to purchase insurance policies, consider forming a corporation or LLC to help insulate you from liability. Another benefit to establishing your own company may be for immediate deduction of some expenses and reduction of taxes that you would otherwise have to pay. See your accountant or financial adviser for more details.
Speaking of accountants, you should engage the services of an accountant or tax preparer to help you register your company, report income, and pay taxes on such income to appropriate local, state, and federal agencies, as required.
February 19, 2011 Comments Off on Feeding the Starving Artist/Legal
Placing Products in Your Production
by Mark Levy & Michael Bashover
How would you like to earn $15 million on your next photograph or video production merely by moving some burgers around on camera? That’s what the producers of “Men in Black II” did in 2002 when Burger King paid them to have BK products appear on screen. Although Burger King may not be willing to give you $15 million to advertise its products in your photographs or independent movie, you can always seek smaller deals to help subsidize your production.
Product placement is a form of advertisement in which particular brand names or products are incorporated into your work. Advertisers often prefer this method of exposure due to its subtle nature as compared with explicit commercials that may bother—to say the least—potential customers. Product placement has become more commonplace as a means to subsidize increased film or still photograph production costs.
However, as an independent creator, you may not have the luxury of receiving compensation in exchange for your depiction of a particular trademark or brand name. It is not uncommon for a trademarked item (e.g., Coca-Cola, Prada, Corvette) to be displayed in a film or photograph, regardless of whether the exposure was deliberate. If you include an identifiable brand name in your production, you should become familiar with the array of laws and regulations surrounding the matter.
You Can Use Trademarks
The Trade Marks Act of 1985 prohibits the “unauthorized use of trade marks as trade marks.” Consequently, you will usually not violate the Trade Marks Act when you display a trademarked product in your production. For example, your actor may drink a cup of McDonald’s coffee without infringing the McDonald’s registered trademark. As long as the trademark is not represented as a “badge of origin” it will not be a cause of concern for you. In fact, if you can get Tom Cruise to drink from the cup and smile on camera, the McDonald’s corporation may even pay you for placement of that product. For example, in 1982 Steven Spielberg got the Hershey Chocolate Company to spend $1 million merely to have E.T. follow a path of Reese’s Pieces candy. (Sales of Reese’s Pieces candy increased by 65% that year.)
Although the trademark law was implemented as protection for the manufacturers of specific goods, copyright law serves to protect the rights of owners of artistic works. The Copyright Act defines artistic work as: paintings, sculptures, drawings, engravings, or photographs.
Branded products that are the subject of copyrights may be used in videos or photographs as long as their appearance is “incidental.” For example, an actor or model may walk past a copyrighted painting without infringing the copyright law, as long as the painting is not the focus of the scene. Whether such an occurrence is considered incidental is determined by the degree with which the copyrighted item is incorporated into your work. However, there are circumstances in which the use of a copyrighted item will not be considered incidental; such occurrences can result in legal action. For example, Tom Cruise and his movie studio are facing a possible lawsuit for the replication of Hitler’s infamous globe in the production of “Valkyrie.” In 2007, the globe’s current owner registered the globe in the Copyright Office, preventing anyone else from producing a copy of that object or a globe derived from the original. Similarly, if you wish to incorporate a well-known image (e.g., painting, photograph, sculpture) into your work, make sure to first determine whether the image or sculpture is under copyright.
It has been established that the incorporation of trademarked and copyrighted items into photographs or video is permissible if they pertain to the most common circumstances of use. However, it is unlawful to make false, disparaging or harmful statements about a branded product. The common law tort of “passing off” protects a manufacturer from a misrepresentation of its product that may damage its reputation, or “good will.” Good will refers to the benefit of having a good name and a reputation of respectability in association with a brand. For example, your work cannot depict the consumption of a Gatorade drink as a leading cause of blindness, nor could you indicate a correlation between Levi’s jeans and sterility. Refrain from making fallacious statements about a trademarked product in order to avoid a Trade Practices Act claim, which is a legal action pertaining to misleading or deceptive conduct. In order to avoid such legal action, include a disclaimer at the onset of your production that states that it is not associated with any of the products or brands that it features.
The good news is that you can probably use other people’s products in your productions; the better news is that those people may even pay you for the placement.
December 23, 2010 Comments Off on Feeding the Starving Artist
Their Album or Video,
by Mark Levy and Roman Zelichenko
As a still photographer or a videographer, freelance projects can be a great source of experience, exposure, and at the very least, some spare change. Let’s say a newly engaged couple approaches you and asks you to photograph or videotape their wedding. Some questions immediately come to mind. Who exactly wants to be photographed or taped? When and where will the photographing or taping be done? How much will you be paid? Will equipment be provided or do you need to provide it yourself? These questions are realistic and will likely determine whether you accept the project. You’re probably not thinking about long term legal ownership and copyrights, but should you be?
According to the Copyright Act of 1976, the creator of a work is the owner of the copyright to that work, unless other explicit, written legal arrangements have been made. This no longer means, as the 1909 version of the law originally stipulated, that protection is granted only to works of art that are “published.” Now, a work that is “fixed in any tangible medium of expression,” like a DVD or a memory stick, can be protected by law even if it is not actually “published.” There is, however, an exception to this: a “work made for hire,” which deals with a work created by one individual that was commissioned by another. The nature of freelance projects is exactly this, so let us explore this exception.
The “work made for hire” doctrine essentially states that although a work is created by one individual, the copyright to that work (i.e., the right to display and copy it), may be owned by another (i.e., your client). Thus, the couple that hires you to photograph or tape their wedding becomes the commissioning party while you, the photographer or videographer, are the creator. You will spend hours preparing the equipment, planning angles and lighting, transporting equipment, editing and burning DVDs, and ultimately creating a memorable album or video. What if, after all your effort, you find that you want to use the shots or the video to display your skills to potential clients? Conversely, what if the couple gets famous and the photos or video is broadcast thousands of times? Can the couple upload portions of your work online? It is important to know who, in the end, will have copyright rights to your work.
CASE LAW AND YOU
According to the Copyright Act, a work is “made for hire” when: (1) that work is “prepared by an employee within the scope of his or her employment”; or (2) when the work is commissioned to be used in one of nine specified categories and there is a written, signed agreement between the parties expressing that the work “shall be considered a work made for hire.”
Lawyers (bless them!) get paid to battle over works such as “employee” and “employer” and whether their client fits into either category. Luckily, however, since the 1989 U.S. Supreme Court case, Community for Creative Non-Violence v. Reid, these words have been given clear definitions.
In CCNV v. Reid, the Supreme Court declared that an “employee” relationship is mainly determined by the hiring party’s influence on the project. Some factors that weigh into this are the skills required, the source of the tools (did the hiring party or the artist provide them?), the duration of the relationship between the parties, the presence of employee benefits, and the hiring party’s tax treatment of the artist, among others. These factors, however, can be hard to predict when beginning a project. Accordingly, the Supreme Court made it difficult for a hiring party to prove that the work was made for hire. It could certainly be unfair if, at the end of the project, the couple who hired you decided they had sufficient influence, asserted an employee relationship, and claimed copyright ownership.
For a small, one time project, such as the wedding product, you might not enter into a contract expressly stating that the work is “made for hire.” If this is the case, even if your project falls within one of the nine categories specified in the statute, you – not your client – will own the copyright rights. In other words, your clients will own the DVDs you provide (after all, that is what they paid for), but they will not be permitted to display them publicly or make copies of them without your permission. This is the same as owning a CD or a commercial DVD but not being allowed to copy it.
Thus the law is on your side. It’s important to keep the “work made for hire” exception in mind when taking on a project, but it should not stop you from doing so and should, in fact, empower you. As the creator of a photo album or video, you will have the power of the court behind your copyright ownership and behind the subsequent use of your work as well. Still, it’s a good idea to have a written agreement with your clients, spelling out each party’s rights and obligations. This simple, professional step can help prevent litigation and having to share your profit with your friendly lawyer.
About the authors:
Mark Levy is creator of ragazine’s “Feeding the Starving Artist” column, a free legal resource for artists and others involved in creative pursuits. His bio is on the ragazine “About Us” page. Levy also writes ragazine’s “Casual Observer” column that appears monthly.
Roman Zelichenko is attending Brooklyn Law School.
October 25, 2010 Comments Off on Feeding the Starving Artist
Wait, Wasn’t That
My Substantially Similar Idea?
by Mark Levy and Shaun R. Vavra
Enforcement of copyright rights is a sensitive subject. Copyright infringement is the act of violating a copyright holder’s exclusive rights granted by the federal Copyright Act, and is nothing short of theft. The Supreme Court recognizes copying as “that which comes so near the original as to give every person seeing it the idea created by the original.” The severity of the subject is indicated by the fact that an infringer could be fined from $200 (unintentional infringement) to $150,000 (willful infringement) per act of infringement, or even by a jail sentence.
Infringement is dependent on three components: the holder must have an active or enforceable (registered) copyright, the alleged violator must have access to the copyrighted material, and the duplication must be “substantially similar” to the copyrighted material. Copyright infringement relies heavily on these three prerequisites, with the absence of only one stultifying the infringement process.
As you would most likely assume, the presence of these characteristics is subject to perpetual argument. It is hence the responsibility of the civil or criminal court to organize this mess and to define what is indeed infringement. With this thought in mind, what exactly does the court deem copyright infringement, and what exactly constitutes substantial similarity? The answers to these questions vary vastly from court to court.
The federal Copyright Act establishes the grounds for copyright protection. As the initial creator of a work, you are granted the privilege of the first owner. For a copyright to be valid you must reduce your aforementioned work to a tangible medium like paper, canvas, clay, marble, CD, or DVD. In the United States, copyright attaches automatically upon conception of a work and registration is not necessary, although you should register your work in the U.S. Copyright Office if you wish to sue an infringer.
You can usually prove presence of the information or “access” easily. Presence of the information requires that the copyright infringer of your copyrighted material had access to the material before he copied it. Courts typically will revert to a question of public access to prove presence of the information. For instance, was your copyrighted material displayed on YouTube or at an art gallery, or was it stowed away in your basement? A court ruled in O’Keefe v. Ogilvy & Mather Worldwide, Inc. that although the copyrighted work, the tagline “My card. My work,” was posted on the Internet, the copyright holder failed to prove the defendant had reasonable opportunity to view the work. Therefore, the infringement claim was dismissed. From this you can see that an opportunity to view the work is not always the same as open display.
Substantial similarity is the standard used to determine the level of similarity between two materials. The first rule of substantial similarity is there are no rules. There is no quantitative method to decide whether a duplicate is substantially similar to your copyrighted material. This is arguably the grayest area of the criteria for infringement, and the topic on which most courts vary. Substantial similarity is relied on because you may find direct evidence of copying difficult or impossible to prove. Courts use the judgments of the ordinary lay observer to determine similarities.
There are two categories of substantial similarity: comprehensive and fragmented. Comprehensive similarities are non-literal and often implied, where fragmented similarities are literal, but minor segments. This is the traditional method of approaching an infringement claim. Has the duplicate taken so much of the copyrighted material in either of these categories to have wrongly appropriated something that belongs to the owner? Different courts have since adopted their own methods for determining similarities. The Ninth Circuit created a test called the Total-Concept-and-Feel Test. This test relies on a subjective view to determine whether the “concept and feel” of one work is similar to another. The Second Circuit Court of Appeals uses a test named the Abstraction-Filtration-Comparison Test. This test compares the elements of a work at increasing levels of abstraction, excluding the elements of that work that are not copyrightable. As you can surely predict, different methods will inevitably lead to a spectrum of infringement results.
A problem of substantial similarity arose in the production of the film, Batman Forever. It would make sense that a popular song requires permission before you use it in your video. In the Batman case though, the court was faced with the issue of visual elements. The opening scene sets the scenery, sweeping from street level up to the peak of a downtown building, where a hostage victim stands in peril. In these few seconds a glimpse of copyrighted artwork, primarily the tops of wrought iron sculptures, are captured. Does this scene violate the sculptor’s copyright? In the decision Leicester v. Warner Bros. the court ruled since the sculpture was part of the architectural work of the building it was exempt from copyright infringement. The court basically decided that, in this case, a private sculpture was somehow equivalent to public property.
On the other hand, a 1991 decision, Grand Upright Music, Ltd. v. Warner Bros. Records Inc., heard by the United States District Court for the Southern District of New York, changed the face of the music industry in a more conservative direction. The court ruled that the original copyright owner must preapprove any sampling of music. Sampling was held to be a direct infringement of a holder’s copyright. The court stated, “it is clear that the defendants knew that they were violating the plaintiff’s rights as well as the rights of others.”
By now you are probably thinking, Is there any way to avoid copyright infringement? Although the guidelines for infringement are vague, you can take precautions to avoid any infringement confrontation. The first and probably the most important guideline is: do not copy any material from the Internet or anywhere else for that matter. By default, all of this material is already copyrighted; copying would constitute clear-cut copyright infringement. This holds true for derivative works, too. If your video is derived from a copyrighted work, you won’t be able to use it without written permission from the copyright holder. So no, you can’t change “just a little bit” of the original work.
Secondly, stay innovative. Being original and creative will help ensure that you are not violating any copyright laws.
You should make note though, as always, there are some loopholes. If the source you are copying was created before 1922, you are safe from allegations of infringement. Also in the list of exceptions is music or sound effects that are royalty-free. Exceptions to copying have additionally been granted under the fair use doctrine. Fair use permits limited copying solely for the purposes of reporting, criticism, commentary, and teaching. Lastly, and probably the most straightforward approach is for you to ask the copyright holder for written permission to use his or her work.
As you have probably concluded, copyright infringement is sometimes hard to pin down. If not obvious, it is certainly a demon to be avoided. By following our few guidelines, you can help ensure an unobstructed path while creating art.
August 20, 2010 Comments Off on Feeding the Starving Artist/Law
Feeding the Starving artist
WHAT’S IN A NAME?
Sometimes the best title for your work happens to be a relatively famous one that has already been used. It may not have been used as a title for a sculpture or an oil painting, but maybe as a title for a song or a name of a famous person or even a brand of toilet paper.
Titles cannot be protected by copyright. The Copyright Act clearly states that names, titles, short phrases and expressions cannot be registered in the U.S. Copyright Office. (See http://www.copyright.gov/circs/circ34.html) In other words, no matter how clever (e.g., a play on words), novel, or distinctive a name, title, logo, or short phrase (slogan) is, it cannot be registered in the U.S. Copyright Office. Therefore, at least under the Copyright Act, you can use an existing title or slogan for the title of your project or work of art.
But wait! Intellectual property protection is more than copyrights. It also includes trademarks for identifying the source of goods and services. When it comes to titles, it is the trademark law that can apply. If someone else has used the title or any trademark on his or her products or services, and you wish to use that exact title or a slight variation, you will have to investigate the circumstances carefully.
Trademark law is similar to copyright law. As you know, copyright law allows a user to prevent others from copying his work without permission. Trademark law also deals with an exclusive right that gives the owner of a mark the right to exclude anyone else from using the mark — or a confusingly similar mark — on goods or services in the same channel of trade. In other words, a trademark owner can prevent others from using the same trademark — regardless of whether the mark is registered — or a trademark that is close to the owner’s mark and is likely to cause confusion as to the source of the goods or services.
However, as long as the goods or services are in a different channel of trade, two or more parties may use identical trademarks. That is why certain trademarks used by different parties can coexist, such as UNITED AIR LINES® and UNITED VAN LINES®; and DOMINO’S® pizza and DOMINO® sugar.
The general rule, then, is that you can use a trademark that is being used by another party as long as your channel of trade is different from the trademark owner’s. But there is always an exception: be careful about “famous” marks. These are marks that are so famous, anyone’s use of them on any goods can be actionable by the trademark owner. You know a famous mark when you see it: McDonald’s, Coca-Cola, SONY, etc. If you call your photo “Home of the Whopper,” you may get a nasty letter from Burger King’s attorneys.
Some movie titles have been registered in the U.S. Patent and Trademark Office (PTO), since product tie-ins with novels and movies are common nowadays. In fact, the tied-in products can generate more income for a movie company than the box office.
For example, STAR WARS® was registered in the PTO by Lucasfilm, Ltd. to cover not only the production and distribution of motion pictures and other entertainment services, but to identify paper goods and printed matter, like address books, comic books, notebooks, children’s books, paper doorknob hangers, printed invitations, paper table cloths, trading cards, book marks, checkbook holders and covers, as well as pencils, pens, paper gift bags, greeting cards, napkins, party hats, postcards, stickers, cardboard figures, temporary tattoos, and school and office supplies.
STAR WARS is also used to identify athletic shoes, slippers, children’s footwear, hats, masquerade costumes, masks, pajamas, rainwear, sweatshirts, ties, T-shirts, underwear, wristbands and suspenders.
Trademarks can be searched at the U.S. Patent and Trademark Office web site, http://www.uspto.gov/ to determine whether another party is using a word or expression as a trademark.
As long as a mark is active (i.e., being used continuously on products or services), it is enforceable. In other words, there is no expiration date for trademarks. Coca-Cola®, for example, has been an enforceable trademark for over 100 years.
Since trademarks are in a gray area of law, it makes sense to avoid using an established mark for your title or to seek legal counsel if you are unsure about your rights or the rights of others.
Mark Levy & Ryan Miosek are attorneys with the Binghamton-based law firm of Hinman Howard and Kattell. They specialize in trademarks, copyrights, and the general protection of intellectual property. You can telephone Ryan Miosek at (607) 231-6804 and Mark Levy at (607) 231-6991, or contact them by e-mail at email@example.com and firstname.lastname@example.org.
April 21, 2010 Comments Off on Levy & Miosek
Feeding the Starving Artist
The Public Domain
When our country’s Founding Fathers adopted the U.S. Constitution, they wanted to make sure that, unlike in England, no person could have an unlimited monopoly over property, whether it was real property, personal property, or intellectual property. So Article I, Section 8 of the Constitution gave Congress the power to secure “for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”
The “limited times” stated in this section refers to a time period that has changed over the years, as Congress updated the Copyright Act. Between 1909 and 1978, for example, the copyright term was 28 years, renewable once for an additional 28 years. But the 1976 Copyright Act, which went into effect on January 1, 1978, changed the term of copyright from a maximum of 56 years to the creator’s entire life plus 50 years. More recently, Congress acted again, allowing those with copyright rights (e.g., movie makers, song writers, sculptors, 2-D artists, novelists, screenwriters, etc.) to prevent copying part or all of their creations for their entire life plus 70 years. That’s a long time, of course, but still within what Congress defined as a “limited times.”
Looking backward, however, to works created before 1978, the pre-1976 Copyright Act applies. If someone made a movie, for example, in 1970, and applied for a 28-year copyright registration, it would have expired in 1998, unless the copyright holder decided to renew the registration for another 28 years. Then the expiration of the copyright rights wouldn’t occur until 2065.
The Copyright Office provided a handy table for calculating when the copyright rights of a particular work will expire, depending upon when the work was initially registered and whether the registration had been renewed. For instance, following is an abridged timeline for works published within the United States. You can access the rest of the table by visiting
|Date of Publication||Conditions||Copyright Term|
|Before 1923||None||In the public domain|
|1923 through 1977||Published without a copyright notice||In the public domain|
|1978 to 1 March 1989||Published without notice, and without subsequent registration within 5 years||In the public domain|
|1978 to 1 March 1989||Published without notice, but with subsequent registration within 5 years||70 years after the death of author, or if work of corporate authorship, 95 years from publication|
|1923 through 1963||Published with notice but copyright was not renewed||In the public domain|
|1923 through 1963||Published with notice and the copyright was renewed||95 years after publication date|
|1964 through 1977||Published with notice||95 years after publication date|
|1978 to 1 March 1989||Created after 1977 and published with notice||70 years after death of author, or if work of corporate authorship, 95 years from publication|
|1978 to 1 March 1989||Created before 1978 and first published with notice in this period||The greater of the term specified in the previous entry or 31 December 2047|
|From 1 March 1989 through 2002||Created after 1977||70 years after death of author, or if work of corporate authorship, 95 years from publication|
|From 1 March 1989 through 2002||Created before 1978 and first published in this period||The greater of the term specified in the previous entry or 31 December 2047|
|After 2002||None||70 years after death of author, or if work of corporate authorship, 95 years from publication|
You can access some of the Copyright Office database at http://www.copyright.gov/records/. If you don’t know when a work was registered, the Copyright Office can search its database for you for $150 per hour.
Here’s a rule of thumb that may come in handy: any work that was created before 1923 is now in the public domain, regardless of whether the registration was ever renewed. That’s the magic year. All works created before 1923 can be used without permission by the creator of those works. That would include the music of Brahms, the poetry of Shelley, the plays of Shakespeare, and the paintings of Rembrandt. Be careful, though, that you don’t use a modern recording of a Brahms musical piece, since that particular recording is most likely still under copyright, even though the rights to the underlying musical work are in the public domain.
There are exceptions to the copyright law. For example, under the fair use clause of the Copyright Act, in certain situations you may use copy-protected works without permission. See 17 U.S.C. §107. Also, works created by the federal government cannot be protected by copyright. We are allowed to copy part or all of government publications, photographs, videos, soundtracks, etc. That means that you can copy some or all of productions of the Department of Defense, NASA, Congress, the FBI, and the like without obtaining permission.
Now that you know how to protect yourself in the “public domain,” who will shoulder the responsibility of promoting your work? Throughout the contract process an artist should not overlook the minute details with respect to promotion of the display of their hard work. This includes all artists, not just gallery artists. The producer of a film, the performance dancer, the writer, all should concern themselves with how the work will be promoted and, most importantly, how will it affect their overall bottom line.
Many galleries, agents, production houses, etc. (“promoter”), will agree to take on the responsibility of promotion of the work. However, the cost of this promotion most times will be passed on to the artist through higher commission rates received by the promoter. Terms in the contract that address the promotion of the work will aid the artist in realizing the maximum gain for the hard work that has been put into creating it. As we have said all along, emerging artists should not be timid about insisting on terms in the contract that maximize their gain. Precedent is a hard obstacle to get around as the artist progresses with his or her career.
Promotion of the work needs to be set out in the contract in detail. Specifically, the artist will want to get in writing who will handle any press releases, handbills, posters, and the all important opening reception. As mentioned above, many galleries will take on these responsibilities, but will pass on the overall cost to the artist through the commission that the gallery will take on a sold piece. As added leverage for the artist to reduce the amount of the commission the gallery will take on the sale of the work, he/she may consider assisting the promoter in organizing the promotion of the show.
Whomever takes on the responsibility of promotion, the contract should be clear as to what promotion will be done. At a minimum, the artist will want to make sure the contract includes terms that address, (a) how many posters will be produced, (b) where will the posters be hung to gain the maximum amount of exposure, (c) who will hang them, (d) how long before the show will promotion begin, and (e) how long will promotion of the show continue after the show has begun. The more involved the artist can be with the promotion of her/his own show, the more she/he will be able to control the overall passalong costs.
In the end, whether the show is a success or not depends on what was done to get people to attend. A weak promotion will result in a weak turnout. Specific terms in the contract will give the artist control to direct how the promotion will be accomplished. Overall success will depend on the willingness of the artist to get involved and have his or her opinions not only heard – but also included.
Mark Levy & Ryan Miosek are attorneys with the Binghamton-based law firm of Hinman Howard and Kattell. They specialize in trademarks, copyrights, and the general protection of intellectual property. You can telephone Ryan Miosek at (607) 231-6804 and Mark Levy at (607) 231-6991, or contact them by e-mail at email@example.com and firstname.lastname@example.org.
February 20, 2010 Comments Off on Levy & Miosek
Primer on Contracts:
Know What You’re Getting Into
– And With Whom
By Mark Levy & Ryan Miosek
We attempt to cover topics having the greatest interest for as many artists as possible. Many of the legal concepts that apply to one type of artist also apply to others. Although we try to discuss topics that matter to all artists, including but not limited to visual artists, graphic artists, sculptors, composers, photographers, moviemakers, writers, and dancers, certain topics are clearly more appropriate for specific artists and their work. For example, musicians are concerned with performances, while visual artists are interested in showings at galleries. But be patient. Over time, we will discuss topics that concern every artist.
Beginning Basics of Contracts
In the coming months we will cover all of the contractual concepts that must be considered before executing a contract. In this column, it is important to provide the beginning basics of any contract. In most situations, contractual terms will be moot as both parties will perform as they have provided theywould under the contract. In cases where one party fails to hold up their end of the bargain (i.e. breach), it will be very important to have the black-and-white contractual terms to fall back on.
It may seem elementary, but the one of the most important terms of any contract is the names of the parties (to the agreement) forming the contract. In the event of a breach, knowing who the parties to the contract are will save a lot of time and money determining who the proper party to the suit is. As an artist, you want to know who it is that you are entering into business with. Is it the individual who owns the gallery, or is the gallery owned by a corporation? Is the person you are contracting with the person who will ultimately be on the hook for a breach, or is this person a representative of a larger group? In that case, does that person have the authority to enter into a contract on behalf of the group? As you can see, knowing who is entering into the contract is not a trivial item, and one that must not be ignored.
The second term that can be overlooked or over simplified in the contract is what exactly is being contracted for? Recently we met with an artist who was contracting to sell prints of original works for $5 a piece. This particular artist had drafted a very well written contract laying out all the intricate details, many of which we will discuss in future articles. When it came to what was being contracted for, however, the contract failed to mention the works to be sold were prints. In the end this simple mistake could have resulted in that artist contracting to sell original works for $5 a piece. Without specificity of what was being contracted for, a court considering the contractual terms may have read the ambiguity in favor of the buyer. This is especially so when the artist contracting to sell work is an emerging artist and does not have a reputation in the art community, or another verifiable basis from which the court can determine reasonable selling prices.
Such a potentially unsavory result leads us to the moral of this section: Never, ever, ever leave anything to chance, or to the interpretation of the court. If it seems too basic to include in the contract, chances are it will be the term you wished you had included when you find yourself fighting for your rights.
Types of Property
As mentioned in our previous conlumn, the three classes of property are real property, personal property, and intellectual property (IP), which, simply stated, relates to what comes out of your head. You, as creator of an artistic work, can transfer your rights in your creative work by assigning those rights, much like a real property owner can sell a house, or a car owner can sell a car. Or, you might decide to maintain ownership, but allow others to enjoy the work, as would occur when you sell someone a photographic print or a DVD. The latter situation is more like an apartment owner who leases an apartment, or a car owner who rents a car.
Similar to compensation for real or personal property, as the IP owner you have options for receiving payment. First, you may desire objects or services that are valuable; or, (much more often), you may want to be paid in cash. If that’s the case, a one-time payment or lump sum might be agreeable to the person who buys your artistic work. That person is known as the “assignee” – or the “licensee” in IP parlance. Alternatively, the licensee may be able to afford only a portion of your asking price. In that case, you might consent to receive payments over time. Such payments are known as “royalty” fees or “royalties.” An analogy to royalties is the fee a car renter pays to a car rental organization. The driver may pay by the mile, by the day, or a flat fee for a week or for a year. Similarly, the licensee of your artistic work can also pay you a flat, lump-sum fee or a given amount for each unit of time. If your licensee intends to make recordings or prints or postcards or bumper stickers from your work, with your consent, of course, you may decide to receive a royalty fee for each product sold to the public.
Royalties are considered taxable income, and that’s all we’re going to say about that.
If you are promised sufficient payments, you might agree to grant an exclusive license to the licensee. That is, only one party will have the right to enjoy your work. Exclusive licenses are usually considered more valuable than licenses granted to two or more parties simultaneously, a so-called “non-exclusive license.” In other words, non-exclusive licensees usually realize that they may have competition from other licensees, so they will offer you less money for the non-exclusive license.
In addition to an ongoing royalty fee, you might also ask for a down payment. In this way, even if your licensee does not follow through with his or her promise to sell many copies of your work, you still end up with money in your pocket. How to determine the amount of a fair down payment requires research based on supply and demand. Here is where an attorney who acts as a negotiator can help you arrive at a reasonable offer.
There is more to the subject of licensing, some of which Mark Levy has included in a short paper: “Should I Consider Licensing?” For a free copy of that paper, please contact Mark at email@example.com.
Mark Levy & Ryan Miosek are attorneys with the Binghamton-based law firm of Hinman Howard and Kattell. They specialize in trademarks, copyrights, and the general protection of intellectual property. You can telephone Ryan Miosek at (607) 231-6804 and Mark Levy at (607) 231-6991, or contact them by e-mail at firstname.lastname@example.org and email@example.com.
December 22, 2009 1 Comment
Feeding the Starving Artist
Shakespeare may have been a little quick when he unceremoniously wrote, “The first thing we do, let’s kill all the lawyers.” Had Shakespeare been around today he just may have wanted to hear what we have to say first, as we take the bold step of trying to “feed” the “starving artist.” Now that we have your attention, it is our intent in this series of articles to provide artists with resources to ease the contract process, protect the artistic product, and maybe in the end make art profitable.
The first of our goals after recognizing the issues that artists face on a daily basis was to take the guess work out of contracts involving the display, production, and exhibition of art. Such contracts are not limited to the display of gallery work, but can be applied to film production, performance dance, and writing. Some of the most important decisions regarding works of art are made at the contract stage, before anything is ever displayed or sold. Contracts, be they gallery, publishing, or film production contracts, not only capture both parties’ (i.e., gallery owner and artists) understanding of the agreement, but also protect the rights of the artist. It is easy for an artist just starting out to believe that his or her bargaining abilities are limited due to their possible perceived obscurity in the art community at large. However, with basic contract knowledge and maneuvering, artists can help to ensure that they are getting the best possible deal with the biggest potential pay-off.
While some artists do not care to think about their work in monetary terms, at the end of the day even those committed to “the work” have to be able to create “the work.” It is our belief that with the assistance of legal concepts, artists do not have to sacrifice anything in the way of commitment while making sure they are getting what they deserve. Contracts that clearly and explicitly provide the basic rights of parties, the payment terms, promotion and advertisement, and selling strategies can go a long way to not only protect the artist and a promoter (i.e., publisher, gallery owner, film studio, etc.), but also show the art community that no one can take advantage of you, the artist.
With respect to your work as a whole, what you don’t know can hurt you, both in terms of protecting your work and in terms of infringing on the rights of others. So it’s important to know more than how galleries and forums and performance centers work, and how not to be ripped off in contracts to show your work or have it performed.
Protecting your work and yourself from claims of infringement by other artists is the foundation for the other of our goals in setting up our legal department. Information and guidance with respect to such issues will help inform and advise you, the artist, about protecting your rights and about respecting the rights of others who came before you.
In future columns, we will be discussing the copyright law ― both in the U.S. and in other countries ― and the limits of fair use in the copyright law. We will also be discussing the laws of privacy and publicity.
For now, it will be helpful to understand that property, in general, comes in three flavors: real property, personal property, and intellectual property. Real property covers land and things affixed to the land, like your house, your studio, your shed, your factory. Personal property covers tangible things that are also movable, like your clothing, your computer, your tools and instruments, your artist supplies. Finally, intellectual property covers things that come out of your head. And that’s where we come in.
All three types of property have attributes in common. For example, you can transfer property that you own. We have different words to describe transfers, but the concept is the same for all three types of property. In real estate, a house, for example, is “sold” and ownership rights are conveyed by means of a “deed.” In personal property, goods are also “sold” with a “bill of sale.” In intellectual property, however, rights to your works can be “assigned.”
With all three types of property, the owner may want to own the land or the car or the music, but allow someone else to use it. For real estate, the terms we use are “rent” or “lease.” For personal property, the terms are “lend” or “rent” or “lease.” But for intellectual property, we say the work is “licensed.”
There is a bit more to this subject, so we will be discussing it in future columns, as well as other subjects, such as:
• registering your work in the U.S. Copyright Office and why to do that
• copyright notices
• derivative works
• public domain
• duration of copyright rights
• the rights of privacy and publicity
• copyright infringement
• actual vs. statutory damages for copyright infringement, and
• other topics that concern creators of artistic works.
We look forward to visiting you every issue and, of course, welcome your questions and comments.
October 17, 2009 2 Comments