Copyright/Intellectual Property

‘Zorro’ Licensor, in Role Reversal, Faces Trial for Copyright Infringement

18 May 2018

From The Hollywood Reporter:

For nearly 70 years, Zorro Productions Inc. has controlled rights to Zorro thanks to an intellectual property assignment from author Johnston McCulley, who wrote the first story about the masked avenger in 1919. First run by literary agent Mitchell Gertz, and later by his son John Gertz, ZPI has spent decades licensing Zorro to Hollywood studios making movies of the popular character who frees oppressed masses from tyrannical villains.

However, the Zorro licensor may have lost its grip. Thanks to a court decision on Friday that represents the latest in a two-decades-long feud between two men, ZPI appears headed to trial as a copyright defendant for allegedly infringing a Zorro work.

The story begins in 1996.

That year, playwright Robert Cabell published a musical titled Z – The Musical of Zorro about the masked avenger leading a double life. The musical was based on McCulley’s first story as well as a 1920 film starring Douglas Fairbanks. Looking to get his musical off the ground, Cabell provided his script to John Gertz.

A short time after Cabell reached out to Gertz, the playwright had a change of heart. He did the math and realized that a story published in 1919 was no longer under copyright protection.

In a 1997 letter, Cabell wrote Gertz, “Though I appreciate your past support it seems in actuality, the only thing you are able to license to me is the Zorro logo, which I have absolutely no interest in. … You must understand that I will continue this project under the rights of public domain.”

. . . .

“I understand clearly that you have decided that my company’s rights are unnecessary for your project, and that you intend to proceed without our rights,” responded Gertz. “[S]ince you seem determined to proceed onwards, I will simply inform you of the obvious; any attempt to produce your play before a paying audience will result in an immediate lawsuit.”

What followed was a continued war of words. According to Cabell, Gertz interfered with various productions of his musical around the world including an early 2000s Broadway production that never materialized due to threats. Besides copyrights, Gertz also used trademarks to assert authority. That led Cabell to petition for cancellation of registered trademarks.

In 2004, the situation appeared to cool as Sony Pictures was set to release The Legend of Zorro, starring Antonio Banderas. As part of a “walk-away agreement” negotiated by Sony, Cabell withdrew his cancellation petition, and ZPI agreed not to challenge Cabell’s works.

. . . .

Around that time, ZPI entered into a license agreement with author Isabelle Allende for a book that focused on a younger version of the character titled Zorro, A Novel. Then, in 2005, ZPI authorized a new musical by a London-based company. It premiered in 2008 and was performed internationally.

As both Cabell and Gertz had stakes in Zorro musicals, they would again cross swords, especially when a German producer in 2013 became interested in mounting Cabell’s version.

Eventually, this would lead to a lawsuit from Cabell challenging ZPI’s authority over Zorro. Cabell not only looked for a declaration that his own musical didn’t infringe any copyrights and that ZPI’s trademarks were registered fraudulently, he contended that ZPI used material from his script in both Allende’s book and the follow-up musical.

. . . .

“In his original motion, Plaintiff argued that he is entitled to summary judgment of non-infringement because his musical is just a composition of elements from the public domain, it does not infringe,” writes the judge. “Defendants did not respond to these arguments. The Ninth Circuit has held that a plaintiff has ‘abandoned … claims by not raising them in opposition to [the defendant’s] motion for summary judgment.’ Accordingly, the Court deems Defendants to have abandoned the position that Plaintiff does not infringe its copyrights on the merits.”

. . . .

“Where, as here, there is no direct evidence of copying, copying can be proven circumstantially by showing a defendant had ‘access’ to a plaintiff’s copyrighted material and that the two works at issue are ‘substantially similar.'”

The judge doesn’t see access or striking similarity when it comes to the Allende novel and throws out a copyright claim directed there, accordingly.

Link to the rest at The Hollywood Reporter and thanks to Newt and others for the tip.

The Right of Publicity―A Misunderstood, Misshapen, Bloated Monster

16 May 2018

From The Volokh Conspiracy:

The right of publicity is a law that few people outside of Hollywood know much about. Nevertheless, it is an increasingly important right in our digital age even when celebrities are not involved. The right of publicity provides a right to control uses of your identity, particularly your name, likeness and voice, and to stop others from using those without permission. The boundaries of these state right of publicity laws vary widely from state to state, with some limiting the claims to uses in advertising or on products, and others allowing almost any claim when the use is for the defendant’s advantage. Some states limit claims only to those brought on behalf of the living, while others extend such rights after death.

. . . .

The right of publicity can be a valuable mechanism for addressing a variety of twenty-first century concerns about uses of people’s images. But, despite the many benefits of having a right of publicity, its current incarnation comes with a host of dangers. The right of publicity limits what the public can say about public figures, even dead ones, and can bar the public from making sculptures, T-shirts, and posters honoring the recently deceased, such as Prince, Carrie Fisher, Robin Williams, and Muhammad Ali. It can block (and has blocked) the distribution and sale of busts of civil rights heroes, like Martin Luther King Jr. It has prevented video game makers from accurately depicting football players on historical team rosters, and television networks from using clips of their own broadcasts.

The right has led to liability for comic book authors who name characters after their favorite hockey players, and a payout by the nightly news for showing a fifteen-second clip of a performer at a local fair. The right has blocked television and movie producers from making or licensing derivative works based on their copyrighted works, such as action figures, movie posters, and robots that remind people of fictional characters. The right can stop businesses from accurately reporting that celebrities are wearing their clothes or handbags or jewelry, or eating in their restaurants.

Perhaps worst of all, under many state laws, the right of publicity is treated as a fully transferable property right, meaning that your own name, likeness, and voice could be sold, given away, or taken by someone else―forever.

. . . .

The NCAA has claimed that student-athletes assigned (gave) their rights over their names and likenesses to the NCAA in perpetuity. Reality television producers have asked contestants to sign over their rights to their names and likenesses and life stories to the producers or production companies as a condition for participation on the shows.

Both Facebook and Twitter have claimed to be able to use your name and picture to endorse and advertise products, and even on products, like trading cards.

Link to the rest at The Volokh Conspiracy

Here’s a link to The Right of Publicity: Privacy Reimagined for a Public World by law professor Jennifer Rothman

The Royal Wedding and Intellectual Property Rights

15 May 2018

From IPKat:

This coming Saturday – 19th May – the wedding of Prince Harry and Ms. Meghan Markle takes place at St George’s Chapel, in Windsor. In the run up to the royal wedding, there’s really only one question on all our minds of course, what about the Royal IP?! After the Lord Chamberlain’s Office announced that the rules of use have been “temporarily relaxed”, Dr Janice Denoncourt (Senior Lecturer, Nottingham Law School) kindly provides us with the full details:

Global super brand Queen Elizabeth II and members of her family are the subject of worldwide fascination.  The forthcoming marriage of Prince Harry and Ms Meghan Markle to be celebrated on 29 May puts intellectual property (IP), branding and image rights in the spotlight.  Love them or loathe them, the British Royal Family is a unique selling point of the UK.  Business analysts predict a worldwide TV audience of 1 billion, while royalty devotees will inject millions of pounds into the U.K.’s economy. The wedding of Prince Harry, the fifth in line to the throne, presents an array of commercial opportunities in terms of souvenirs, memorabilia, marketing and advertising.  It’s not surprising that many businesses and organisations will want to associate their goods and services with the happy historic event for commercial purposes in the UK and beyond.

However, like other significant events such as the Invictus Games, Royal Ascot and Wimbledon, special legal rules regarding the use of IP and image rights apply. In other words, super brand management is on the agenda. The Lord Chamberlain, the Earl Peel, is the most senior officer of the Royal Household.  His office produces definitive guidelines on the use of the Royal Arms, Names, Images, Royal Devices, Emblems and Titles and of photographs, portraits, engravings, effigies and busts of The Queen and Members of the Royal Family. Normally, using Royal names or Royal residences on products is unlawful if the use of the name suggests the goods have some connection with or are supplied to a Member of the Royal Family. These rules are only relaxed on occasional events of national importance. Although established souvenir firms will have ‘Operation Royal Wedding 2018’ underway, smaller, less IP-aware businesses will be relieved to learn that the Royal Wedding is indeed nationally important. They can relax, but must remain on ‘best commercial behaviour’ so to speak.

The Lord Chamberlain’s Office, announced that:

“In line with previous practice for Royal weddings, Prince Harry has been pleased to approve that the rules governing the commercial use of Royal Photographs and Insignia may be temporarily relaxed to allow their use on souvenirs commemorating the Engagement and Marriage of HRH Prince Henry of Wales and Ms Meghan Markle.” 

. . . .

Beware Royal IP Etiquette!
It is not quite a free for all. To qualify, souvenirs must be in ‘good taste’; free from any form of advertisement; and carry no implication of Royal custom or approval – otherwise such use might infringe Prince Harry and Ms Markle’s IP and image rights. There are specific restrictions on certain types of souvenir[s].

. . . .

Kensington Palace owns the copyright in the official engagement photographs. Alexi Lubomirski, the same man who shot their engagement, has been appointed the official Royal Wedding photographer. Permission to use Engagement and Royal Wedding images must be cleared by the Royal Household before use and will be authorised only for news editorial purposes and NOT for use on souvenirs, or memorabilia and the like.

Link to the rest at IPKat

Invisible Labor and Digital Utopias

11 May 2018

From Hacking Education:

This is the transcript of the talk I gave this afternoon at a CUNY event on “The Labor of Open”

. . . .

As I’ve thought about what I might say, I will admit, I had to do a lot of reflection about what my relationship is to “open.” Because it’s changed a lot in the last few years.

I don’t want to make this talk about me. That would be profoundly unhelpful and presumptuous. But I also don’t want to make that word “open” do work politically (or professionally) that it hasn’t done for me personally (politically and professionally). And while I understand that for many people “open” is a key piece of an imagined digital utopia, it hasn’t been always so sunny for me.

. . . .

At the beginning of the year, I made a bunch of changes to my websites – that is, my personal website and Hack Education, the publication I created almost a decade ago. I changed the logo. I updated my author photo. And I got rid of the Creative Commons licensing at the footer of each article.

My websites have always been CC-licensed – although admittedly, I’ve used different versions over the years, mostly going back and forth with whether or not I want that non-commercial feature. I guess, in some people’s eyes, that means my work was never really, truly “open.”

I thought a lot about this change, about ditching the CC licensing – this is my work, after all, and as such, it’s deeply intertwined with my identity. It’s also my experience – my lived experience – as a woman who writes online about technology.

Five years ago, I removed comments from my website. Lots of folks were not pleased. But dealing with comments was a kind of labor that I was no longer willing to do.

’d written a couple of articles that had ended up on the front page of Reddit and Hacker News – articles critical of Codecademy and Khan Academy, in particular – and my website was flooded with comments signed by Jack the Ripper and the like, chastising me, threatening me. “Just delete those comments,” some people told me. “Flag them as spam.” But see, that’s still work. Not very rewarding work. Emotionally exhausting work. Seeing an email appear in my inbox notifying me that I had a new comment on my site made me feel sick. So I removed comments altogether – that’s the beauty of running your own website. I felt then and I feel now that I have no obligation to host others’ ideas there, particularly when they’re hateful and violent, but even if they’re purportedly helpful – “there’s a comma splice in your last sentence.” Or “It’s a little off topic but anyone looking for a job should check out this website that is currently hiring people to work at home for $83 an hour.” You know. Helpful comments.

. . . .

But because I’ve removed the Creative Commons licensing, you now do have to do one thing before you take an essay of mine and post it elsewhere: you have to ask my permission.

As a woman who writes online about technology, I have grown far too tired of “permission-less-ness.” Because “open” doesn’t just mean using my work for free without asking. It actually often means demanding I do more work – justify my decisions, respond to accusations, and constantly rethink how and where I want to be and am able to be and work on the Internet.

So I’ve been thinking a lot, as I said, about “permissions” and “openness.” I have increasingly come to wonder if “permission-less-ness” as many in “open” movements have theorized this, is built on some unexamined exploitation and extraction of labor – on invisible work, on unvalued work. Whose digital utopia does “openness” represent?

. . . .

When we think about “open” and labor, who do we imagine doing the work? What is the work we imagine being done? Who pays? Who benefits? (And how?)

I talk a lot in my writing about “the history of the future” – that is, the ways in which we have, historically, imagined the future, the stories we have told about the future, and perhaps even the ways in which those narratives shape the direction the present and the future take.

I’d like to turn to some of of these depictions of the future, a series of postcards that were created in 1899 in France to celebrate the turn of the century and to imagine what the world might be like in the year 2000.

Link to the rest at Hacking Education

Did Youtube Phenomenon Poppy Steal Her Style From Another Star?

11 May 2018

From Wired:

A prominent YouTube personality who has garnered tens of millions of views is being sued by another star for allegedly stealing her persona. The question now is whether the case has any merit under copyright law.

In April, YouTuber and musician Mars Argo, whose real name is Brittany Sheets, filed a lawsuit in California against another star, Poppy (Moriah Rose Pereira), and her co-collaborator, Titanic Sinclair (Corey Mixter). The complaint, embedded below, accuses Mixter of “calculatedly” transforming Pereira into a “Mars Argo knockoff.” Sheets is also seeking domestic violence damages from Mixter, accusing him of “severe emotional and psychological abuse and manipulation.” The pair were in a romantic relationship until early 2014; after they split, Mixter began working with Pereira, who would soon become famous as Poppy.

. . . .

From 2008 to 2014, Mixter and Sheets dated and collaborated on the Mars Argo project, which gained a cult following on YouTube and other social platforms. They were best known for their vlog series Computer Show, which mostly parodied American internet culture. In early 2014, after the pair had broken up, they published one of their most successful videos, “Delete Your Facebook,” which garnered over 1.8 million views. In November of that same year, Poppy released her first video “Poppy Eats Cotton Candy.”

Mars Argo fans immediately noticed similarities between the newcomer and Argo, and a conspiracy theory began to brew online. Poppy’s mysterious, deadpan videos mimicked the same ironic, dark humor as Mars Argo’s. The overlap wasn’t just tonal: the two looked alike.

. . . .

Fans soon began to speculate that Poppy was, perhaps, an extension of the Mars project or that Poppy simply was Mars. Meanwhile, Sheets deleted most of her social media posts, and largely disappeared from the internet. In the lawsuit, Sheets says she did so in order to protect herself from Mixter’s threats and abuse.

In the three years since Sheets went dark, Poppy has risen to fame.

. . . .

But can Sheets successfully sue Poppy for stealing her online persona?

. . . .

Poppy goes on to accuse Sheets of “collaborating and maintaining an ongoing relationship with the exact man who took advantage of me when I was young and vulnerable.” That man is presumably Joshua Michael Moran, also known as Mosh Joran, a musician who is friendly with Sheets. In addition to her statement, Poppy also tweeted two restraining orders she and Mixter allegedly filed against Moran, as well as graphic surveillance camera footage from 2015 that purports to show Moran assaulting Mixter several days before those orders were filed.

. . . .

Sheets’ domestic violence allegations are serious and shouldn’t be viewed lightly. But her copyright and “right to publicity” claims against Mixter and Pereira are worth exploring, especially in an age where YouTubers constantly mimic each other’s style and content. Were her case to win over a jury (the complaint requests a jury trial), it could set stricter guidelines for YouTubers and other entertainers going forward.

“This is a fairly unique case of copyright infringement and looks to stretch the bounds over what is protected under a copyright registration,” says Michael Lee, a partner at the law firm Morrison/Lee, which specializes in intellectual property related to YouTube and videogames. “This will be a case to closely watch as it could set some important precedent if it goes to trial.”

. . . .

In her complaint, Sheets outlines a dizzying number of instances where Poppy appears to have mimicked or outright stolen Mars Argo’s aesthetic, makeup, hair, way of speaking, and clothing. Sheets even accuses Poppy of wearing the same exact jacket as Mars Argo. Her lawyers also point out that Poppy uploaded a video with the same name as one of Mars Argo’s: “Delete Your Facebook.” But legal experts say many of Sheets’ copyright accusations are fuzzy, and include generic ideas and behaviors, like filming a video while sitting on a particular style of chair, wearing bunny ears, and sitting in a white bathtub with a pink background.

“You’ll notice the complaint is very vague when it comes to what works actually infringe—there’s just a lot of hand-waving about global similarities between the two projects,” says Daniel Nazer, a staff attorney on the Electronic Frontier Foundation’s intellectual property team.

. . . .

“Copyright protection does extend to well-defined characters, and the use of those characters can form the basis of a claim for unauthorized derivative works. Mars Argo, based on what I’ve seen, isn’t a fully developed character in the sense copyright law requires,” says Aaron Perzanowski, a law professor at Case Western Reserve University.

. . . .

Neill specifically references Anderson v. Stallone, a California copyright lawsuit where the author of the script for Rocky IV, sued Sylvester Stallone and MGM for taking his work, which he authored on his own accord because he was a big fan of the series. The court ruled that some of the characters the author created were developed enough to be copyrighted, while others were not. While Mars Argo existed for years, experts note, she didn’t have a signature outfit, specific backstory, or settled biography, making it harder to prove that she is well-defined in the same way that, say, Batman, Mickey Mouse, and Yoda are.

. . . .

“The right of publicity claim also seems very weak. A similar persona is not the same as actual use of someone’s identity—Madonna would not have a right of publicity claim against Lady Gaga, nor should she,” says Nazer.

Link to the rest at Wired

PG is skeptical to the max. Part of his problem is that he couldn’t bear to watch the videos of either “celebrity” for more than about 15 seconds.

Here’s a copy of the complaint so you can come to your own conclusions.



Canada Has Obligations

10 May 2018

From Publishing Perspectives:

The International Publishers Association (IPA) has been compelled “to argue that Canada is a bad-case example of governments interfering with copyright and undermining the local market.”

That’s the message that the IPA’s vice president, Hugo Setzer, delivered on Wednesday (May 9) to a hearing of Canada’s Standing Committee on Industry, Science, and Technology.

The hearing, set in Toronto, was one of a series of such public feedback sessions being held through Friday (May 11) in various cities in Canada as part of a five-year review of the country’s 2012 Copyright Modernization Act.

“Our concern,” Setzer told the legislative hearing in Toronto, “is that Canada is now considered internationally an outlier, not only with its ‘fair dealing’ exception for education, but with its court-made law that equates fair dealing exceptions with so-called ‘user rights,’ all of which has resulted in loss of income for Canadian publishers and authors.”

. . . .

While we expect to report on some of the testimony offered by Prieur, Edwards, and Rollan, we want to focus today on the Setzer commentary to the hearing because until now, we have heard of no outside agency such as the International Publishers Association–which represents more than 76 member organizations from 65 nations’ publishing industries–having a chance to speak directly to Canadian legislators, who need to understand the damage that a loosely interpreted copyright exception is causing to their nation’s creative culture and character.

. . . .

And as readers will remember, the problems with the Copyright Modernization Act—as examined in a Toronto conference in November—have to do with the scope of a “fair dealing” exception (called “fair use” in some cultures) in education. Canadian universities have worked along the lines of a “10 percent” approach, which other educational institutions, including K-12 schools, have then adopted. In some settings, instructors have allowed themselves to copy up to 10 percent of a book, or a full chapter, and to then distribute this copied material to students without a publisher’s permission and without paying a licensing fee, sometimes called a tariff.

Link to the rest at Publishing Perspectives

Copyright infringement lawsuits make Indy skyline photo worth a lot more than 1,000 words

9 May 2018

From IndyStar:

Rich Bell doesn’t look like a bully.

“I don’t think so,” the retired lawyer said. “But obviously some people think I am.”

He said he won’t sue “little old ladies.” One time a kid’s parents called and asked for lenience, which Bell granted.

Others who published Bell’s 18-year-old photograph of the Indianapolis skyline without permission get a letter asking for $5,000 to $10,000, depending on how long the photo has been used and how blatant the infringement. He has special contempt for people who have put their own copyright mark on his photo.

There have been about 200 infringement cases, including two judgments of $150,000 apiece in Bell’s favor. Usually, companies or their liability insurance settle the claim. Those who don’t settle or don’t respond will become part of his steady stream of copyright infringement lawsuits in federal court in Indianapolis.

. . . .

Real estate companies have been the worst culprits, Bell said. He also has pending cases against Merchants Bank and the head of the Indiana Prosecuting Attorneys Council. Both dispute the allegations in court documents.

All over a photo Bell took on March 8, 2000, from West St. Clair Street. He returned that night for another photo from the site, which has also been used without permission.

“I think there’s a number of people who don’t even know that that area exists,” Bell said. “It’s down on the canal, and it’s a very picturesque area. At that time, most of the buildings didn’t even have any lettering on them.”

. . . .

In the ensuing years, he sold rights to the photograph a few times, Bell recalled in an interview at his McCordsville home, where numerous photos of his adorn the walls. He is a self-taught photographer.

It wasn’t until 2011 that he became interested in infringement. Bell’s wife, Diane, discovered the photo in a magazine.

“Isn’t that your photograph?” she said.

“It sure does look like it,” Bell replied.

That started him on an effort to learn more about copyright law and, eventually, start quarterly sessions each year on Google Images to discover people using his image without permission.

“The law is designed to make sure people don’t steal other people’s works,” Bell said. “In particular, to put your copyright notice on there and try to tell people that it’s yours. That, to me, is wrong.”

Bell doesn’t win them all and has been called a “copyright troll.”

He lost a $22,289 judgment to reimburse a defendant for legal fees after suing him but being unable to find his screen grab of the photo. Bell said his computer was corrupted and he lost the evidence.

“Mr. Bell has filed a multiplicity of suits in this Court, each involving the same or similar infringement allegations,” federal judge Tanya Walton Pratt wrote. “In many of these copyright infringement suits, Mr. Bell has improperly joined several defendants, thereby saving him extensive filing fees. In this case alone, Mr. Bell sued forty-seven defendants and then quickly offered settlements to defendants who were unwilling to pay for a legal defense.”

. . . .

Mitch Stoltz, senior staff attorney for the Electronic Frontier Foundation, said that while copyright infringement does exist and is against the law, he added that the legal penalties are out of proportion to a photo’s value or the harm suffered by the copyright holder.

Link to the rest at IndyStar

You can see the photo in question in the OP. The Indianapolis Star is careful to

PG’s sentiments are with the photographer in this case. The original photo will never threaten Ansel Adams’ work as iconic Americana, but it is a competently-made photo from what the OP suggests is a seldom-used angle. The commercial attractiveness of the photo seems to be well-established by the large number of people and organizations that have used it without permission.

If you Google Indianapolis skyline, you will find many alternate photos that are available (including a photo of a tattoo of the Indianapolis skyline created on the lower back of a serious Indy fan). Yet people continue to use Mr. Bell’s skyline photo (for which he will sell lifetime usage rights for $200).

The OP doesn’t indicate the photographer has ever attempted to lure others into improperly using his photo by misrepresenting it as being in the public domain or otherwise unprotected. PG suggests it is unfair to demean Mr. Bell based upon the actions of third parties who have either removed copyright notices or claimed that they own the copyright to Mr. Bell’s photo.

PG suggests the OP’s ultimate lesson is that one should check on the provenance of various creative works one intends to use for private purposes, including republishing them online or using them for book covers.

Google Image Search is another way (although not bullet-proof) of checking on an image of uncertain origin. Google searches based upon the physical appearance of an image. Click on the camera icon that appears next to the search box when you’re in Image Search. You can either use the URL of the image or upload a copy of the image file Google and it will present a variety of other images that are visually similar.



Photographer: ‘Stranger Things’ Used My Storm Cloud Without Permission

8 May 2018

From PetaPixel:

Photographer Sean R. Heavey was watching the hit series Stranger Things on Netflix when he spotted a storm cloud that looked strangely familiar. It turns out the show had apparently used one of Heavey’s photos while creating the scene, and Heavey isn’t happy about it.

Heavey says he realized that the cloud that appears in the Stranger Things episode looked extremely similar to his but wasn’t the same one. A few weeks later, however, Heavey’s friend was watching the Beyond Stranger Things behind-the-scenes special (episode 3) on Netflix when he noticed the concept art that was used by the Stranger Things crew.

. . . .

Unlike the actual episode, this image did appear to contain the exact same storm cloud in one of Heavey’s best-known photos, which is titled “The Mothership” and which shows a supercell thunderstorm rolling across the Montana prairie at sunset.

. . . .

“Netflix did not get permission from me,” Heavey tells PetaPixel. “I don’t have the image with any stock agencies so unless they got it from somewhere else, which is an issue if so, then they are using it without permission.”

After Heavey reached out to Netflix with his complaint, the company responded by saying that the cloud in his photo isn’t protected by copyright.

“They are saying the only similarity that exists is the use of a similar cloud formation, that copyright law does not protect objects as they appear in nature, and that an artist can’t claim a monopoly over real-world public domain objects such as a cloud formation,” Heavey says. “The problem with that argument is that it’s not a similar cloud they use — it’s my cloud photo.”

Link to the rest at PetaPixel

Here’s a copy of a Facebook post by the photographer. The OP has several more photos.

The reference in the OP to the photographer’s inability to copyright objects in nature is correct, but as the OP points out, the photographer in this case is claiming a copyright in the photo he took of the storm, not the appearance of the storm itself.

If I take a photo of the Grand Canyon, I own a copyright to that photo and can prevent others using my photo without my permission. However, my copyright is for the photo. Someone standing right next to me with a camera can take a photo of the Grand Canyon without violating my copyright to my photo.

Distinguishing between my photo and the photo taken by the other photographer should not be difficult, particularly if each camera is digital and produces its photo as a computer file.

The digital camera PG currently uses creates a 24 megapixel photo file. A pixel is one dot of information in a photo. A 24 megapixel camera creates an image with 24 million dots, each of which contains numerical information that is transformed into a tiny portion of the final image. The latest iPhone models include cameras that create a 12 megapixel photo file, so each has 12 million dots.

The chances of two photographers taking photos that are identical on a pixel-by-pixel basis are extraordinary miniscule. For one thing, even if the two photographers had identical cameras, they would have to be using identical lenses (on slr cameras with interchangeable lenses) and identical camera settings. A slightly lighter photo would have a different megapixel makeup than a slightly darker photo. A photo that is the tiniest bit of different color looks much different numerically. Even with identical cameras and camera settings, the chances of the cameras being perfectly aligned with each other down to the level of individual pixels are even more miniscule.

If a photographer is going to do more with a photograph than leave the original file stored on a camera memory card or a hard drive, the likelihood that the original photo will be refined and processed using Photoshop, Lightroom or a similar software program is very high. The chances that each of the two photographers making photos of the Grand Canyon make the same adjustments (maybe even in the same order) that change the photo file identically on a pixel-by-pixel basis are up into the realm of finding two identical grains of sand on a beach.

Enough camera geekery.

The bottom line for authors and others is that they should acquire licenses for photos used in covers, advertising, etc., from a reputable photo agency that can be relied upon to have acquired rights to resell or license the photos from the original photographer. If an author uses a cover designer, PG suggests the author may want to ask the designer where he/she obtains their images.

In some cases, a license fee may be charged by the photo agency. In other cases, the photographer may have granted rights to an agency to permit others to reproduce, modify, distribute, etc., without requiring any royalty or license fee being paid to the photographer.

There are three major online sources of royalty-free stock photos of which PG is aware: Unsplash, Pexels and Pixabay.

To compensate for all the text in this post, here are three royalty-free photos of the Grand Canyon.

From Unsplash

Photo by Jason Thompson on Unsplash

From Pexels

CC0 License
✓ Free for personal and commercial use
✓ No attribution required

From Pixabay

CC0 Creative Commons
Free for commercial use
No attribution required

Perpetual License for Derivative Rights

6 May 2018

From Writer Beware:

SFWA’s Contracts Committee has recently been seeing a proliferation of contracts from small magazines, and a very few established markets, that license all derivative rights in perpetuity.

This is a red flag for a number of reasons, even if these rights are licensed non-exclusively. A derivative work is defined by copyright law as “a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.” This sort of rights grab is by no means normal; magazines generally only take very limited first publication and archival rights for a limited time. Licensing the right to create derivative works can and mostly likely will interfere with the author’s right to exploit their right to create or license derivative works to others.

The risks of signing such contracts can be serious. To give examples of some of the negative impact of these rights grabs.

1) Dramatic rights are compromised, limiting the author’s ability to sell works for TV and film use because the author can no longer offer exclusive rights to the story, which means movie or TV producers who want exclusive dramatic rights are not likely to be interested in the work. The best case scenario is that the author may end up having to give the publisher of the magazine a cut of any income.

2) Marketing rights are compromised, in that any marketing deal could be undercut by the publisher, who would also have the ability to market those rights.

3) The ability of the author to publish sequels is compromised. The Publisher could commission sequels to the work from another writer, in competition with the author. Even if the Publisher were required pay a fee to the author for a sequel written by another writer, the existence of such competitive sequels would likely seriously hurt the author’s own sequels.

4) The author would have a de facto business partner for the rest of the author’s life and beyond for the life of copyright. Whether or not a clueless publisher would even realize what they’ve acquired or have any idea how to exploit it, the specter would hover over the author’s further use of any elements in the original story. In addition, if the publisher files for bankruptcy, any rights the publisher held would likely become part of its assets sold during the bankruptcy process. The author would then end up with a completely unknown business partner.

5) Even with a perfectly drafted contract, which seems unlikely with a publisher who would propose such a contract in the first place, it could easily take years of legal action to unscramble the competing rights.

Link to the rest at Writer Beware

Trademark Cock-up

5 May 2018

PG has received several questions about a female author named Faleena Hopkins who has apparently obtained a U.S. trademark registration for the word, “Cocky” as used in connection with romance novels.

Evidently, Ms. Hopkins has been threatening other authors with claims of trademark infringement for their use of the word, Cocky, in titles and as names for their characters.

Here’s the text of an email Ms. Hopkins has reportedly sent to another romance author per a post by Nate Hoffhelder on The Digital Reader:

Hi Jamilla,

My name is Faleena Hopkins, author of Cocker Brothers, The Cocky Series,

The Federal Trademark Commission has granted me the official registered trademark of the word/mark “Cocky”, no matter the font.

Trademark Registration number: 5447836

I am writing to you out of professional respect so that you may rename your book “Cocky Cowboy” which shares the same title as my book, and republish all of the versions (ebook, paperback, and Audible) on Amazon to keep your ratings and money earned.

My attorney at Morris Yom Entertainment Law has advised me that if I sue you I will win all the monies you have earned on this title, plus lawyer fees will be paid by you as well.

I will do that – but I would rather give you the option.

I have had this series established since June 16, 2016 and I take all of the hard work I put into establishing it very seriously.

Your hard work I also take seriously.

You have the opportunity to adjust, rename, and republish before taking further action. You can do so on Amazon without losing reviews.

Thank you,

Faleena Hopkins

PG does not practice trademark law, but somewhere in the back of his mind, a memory stirred. He has done a little quick and dirty research which appears to have confirmed that memory.

First, the obligatory disclaimer: PG is a lawyer, but he is not your lawyer. You obtain legal representation by hiring a lawyer, not reading a blog post, whether created by a lawyer or not. PG is not planning to start practicing trademark law and, if he did, he would do much more than quick and dirty internet research before issuing an opinion about trademark law.

If you can imagine any more disclaimer language, please feel free to include it in a comment so PG can add it to his disclaimer.

Now that everyone is thoroughly disclaimed, here’s the little memory that stirred in PG’s mind:

In some jurisdictions based upon English common law – Great Britain (of course), Ireland and the United States – a hardy entrepreneur could obtain a common law trademark. The entrepreneur obtained this trademark by using it in connection with goods and services sold by him/her. If you marketed your ale as Mangy Dog Ale on a regular basis and Mangy Dog Ale became associated with the refreshment you produced, you had an enforceable trademark. If a brewer in a neighboring village started calling his/her ale Mangy Dog Ale, you could make him/her stop using your trademark.

No government registration was required to obtain a common law trademark to the name you chose and used. If your competitor said he/she should be able to use the trademark, the answer to a simple question decided the issue – “Who used the trademark first?”

In some jurisdictions that have not built their legal systems on the foundation of the English common law, the owner of a trademark is the first person to file for the trademark. These systems are often called first-to-file systems.

Here are some quotes from various trademark attorneys on the first-to-use vs. first-to-file question in the US:

From Tyler Hampy of Widerman Malik:

In the United States, it is not registration, but actual use of a designation as a mark that creates rights and priority over others. Thus, the rule is that ownership of a mark goes to the first-to-use, not the first-to-file.

That being said, trademark ownership is not acquired by federal or state registration, although registration is absolutely beneficial. Ownership rights flow from prior use, either actual or constructive. As the Federal Circuit observed: “[t]he requirements of both adoption and use devolve from the common law; trademark rights in the United States are acquired by such adoption and use, not by registration.” Therefore, even if you had a trademark registration and it was later cancelled, the underlying common law rights in a mark continue.

To acquire ownership of a trademark, it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in commerce. Therefore, a party pursuing a trademark claim must meet a threshold “use in commerce” requirement.

The term “use in commerce” means the bona fide use of a mark in the ordinary course of trade. The use must be more than merely to reserve a right in a mark. Trademark protection is granted only to marks that are used to identify and to distinguish goods or services in commerce, which typically occurs when a mark is used in conjunction with the actual sale of goods or services.

From Keith A. Barritt of Fish & Richardson:

It is commonly assumed that once a federal trademark registration is obtained it confers the exclusive right to use the mark on particular goods or services and can readily prevent use by any other party. Indeed, the Trademark Act appears to say precisely that. However, trademark law is not quite so easy, and in fact having a trademark registration – even a valid and “incontestable” one – does not guarantee the exclusive right to use the mark in all circumstances.

Unlike many countries, the United States confers trademark rights by use of the mark. At the outset, trademark “registration” is little more than a formal acknowledgement of rights already in existence. This contrasts sharply with patents, which actually grant substantive rights the patentee otherwise would never have.

. . . .

If a prior user sold goods bearing the mark in an area prior to use in that area by the owner of an incontestable registration and prior to the registration date, the prior user would have superior rights and could in fact block the registrant’s use of the mark in that area. A prior user could even be the prior user nationwide, and thereby be entitled to block a registrant’s use of the mark throughout the entire country.

From Brian Hall of Traverse Legal, PLC:

Today I will be looking at the issue of the difference between the first to file rules and the first to use rules as it pertains to trademark rights.  This is a common question that I get, “Is it enough that I was the first to file for trademark registration in the United States?”  Put another way, “Does it give me the rights that I want?”  And the short answer is no.

Within the United States, it is the first to use who has rights in a trademark.  The reason this becomes important is because people tend to go to the United States Patent and Trademark Office or USPTO database and look up registered trademarks or even applied for trademarks to determine who has rights in that particular mark.

While that’s a good start, it’s not entirely complete.  And the reason being, is that the United States follows the first to use rule under trademark law.  What that means is that the first entity to make a valid use in commerce of the particular mark is the one that has rights.  This is because under common law, as opposed to statutory law, the first to use is the one that gets the rights to use it moving forward, even if they do not pursue a trademark registration.  This doesn’t mean that one should avoid getting a trademark registered with the USPTO.  But what it does mean is that if you determine that someone has applied for or registered a trademark with the USPTO, and you believe you were the first to use it, you may have actions that you can take to further establish your rights.  You might be able to file what’s known as a cancellation proceeding in front of the TTAB or you may jump right to litigation.

From B. Brett Heavner and Marcus H.H. Luepke of Finnegan:

Under U.S. trademark law, being the first to file an application to register a trademark does not guaranty priority to the applicant. In general, under U.S. common law it is the date on which a mark was first used by its owner in the United States that decides the right of priority, irrespective of whether the mark is ever registered in the U.S. Trademark Office. Unlike other jurisdictions, mere use of an unregistered common law mark in the United States gives the user territorial priority trademark rights even without requiring a certain level of notoriety. Such earlier use establishes a right of priority even over a later-filed U.S. application to register a similar mark if the first use of the mark of the application was commenced after the prior first use of the unregistered common law mark.

. . . .

[F]oreign applicants sometimes adopt a mark knowing it was already in use in the United States by another party under the mistaken belief that the mark must be registered with the U.S. Trademark Office for that party to have trademark rights. After confirming that the other party had failed to apply for a registration, these foreign applicants commonly believe that they are safe to launch their product in the United States by being the first to apply for a U.S. registration.

Unfortunately, such foreign applicants often receive cease and desist letters from the prior user and only then learn that they cannot successfully rely upon their application filing date due to the other party’s prior common law use, and must therefore cease use of their mark in the United States. Under U.S. trademark law, actual knowledge of another party’s prior use can even lead to claims for willful trademark infringement and liability for treble damages.

PG says you can Google other statements of the First to Use trademark principles to your heart’s delight by searching on trademark “first to use”

Or you can search Amazon books for the word, “Cocky” in a title to see when they were first published.

Ms. Hopkins’ trademark registration, number: 5447836, helpfully provides the information that she first used the mark, “Cocky”, on June 16, 2016. If authors were using the mark, “Cocky”, prior to that date, they might be the rightful owners of the trademark.

Several online discussions of Ms. Hopkins’ trademark mentioned that RWA was planning to look into the matter.

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