Are Sherlock Holmes characters and story elements copyrighted? Reply

A lawsuit over the FREE USE of the Sherlock Holmes characters and story elements prompted the US District Court in the Northern District of Illinois to do some detective work into the famous, fictional detective to determine whether Holmes, other characters and story elements of Sir Arthur Conan Doyle’s books and stories had entered into the public domain.

The lawsuit, Klinger v. Conan Doyle Estate, raises two interesting copyright questions:  1) what are the copyrightable elements of a literary work; and 2) when do copyrightable elements of a literary work enter the public domain and become available for free public use.

As a bit of background info, Sir Arthur Conan Doyle authored four novels and 56 short stories featuring Sherlock Holmes and Dr. Watson and published these in the US over a span of 30 years (from 1890 – 1926). As one might expect, new characters and plot elements were introduced in the novels and short stories over time.  Hint: these details are critical to the court’s analysis of the copyright questions raised in the case.

QUESTION 1: Copyrightable Elements of a Literary Work.  The court held that copyright protection extends to characters, character traits, and storyline because these are copyrightable “increments of expression.”  By contrast, the court reiterated a general tenant of US copyright law that “ideas, plots, dramatic situations and events” are not elements in a literary work that are protected by copyright.

QUESTION 2: When Do Copyrightable Elements of Sir Author Conan Doyle’s Literary Works Enter the Public Domain and Become Available For Free Public Use?  The short answer is that his works published prior to 1923 are in the public domain.  Since Sir Author Conan Doyle published works featuring Sherlock Holmes and Dr. Watson both before and after 1923, the court analyzed the publication dates of the works and the introduction of various copyrightable “increments of expression” (including characters, character traits and storyline) to determine which were published pre-1923 and post-1923.  Those published pre-1923 are in the public domain and those published post-1923 are still protected by copyright.

Interestingly, some of the post-1923 characters, character traits and storylines that were at issue in the lawsuit and held by the court to be still protected by copyright are: 1) Dr. Watson’s second wife (introduced in 1924); 2) Dr Watson’s background as an athlete (introduced in 1924); 3) and Sherlock Holmes’ retirement from his detective agency (introduced in 1926).

Only 10 of Sir Author Conan Doyle’s works featuring Sherlock Holmes and Dr. Watson were published in the US post-1923 and are still covered by copyright protection.  The 50 earlier works are in the public domain, which means that “increments of expression” including characters, character traits and storyline (most notably Sherlock Holmes and Dr. Watson) are available for the public to use for free without a license.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

This summary is based on the Memorandum Opinion and Order issued by the United States District Court for the Northern District of Illinois in a ruling on the plaintiff, Klinger’s, motion for summary judgment against the Conan Doyle Estate.   See also: earlier blog posts on the topic of “public domain,” https://iplegalfreebies.wordpress.com/category/public-domain/; other copyright and public domain resources, http://www.copyright.gov, http://copyright.cornell.edu/resources/publicdomain.cfm, http://creativecommons.org/publicdomain/; @iplegalfreebies and www.kasterlegal.com.

Trademarks as Membership Marks – Hells Angels, Fresno Bulldogs Reply

Trademarks are often used as membership insignia for various organizations, groups and fans… like the Hells Angels and the Fresno State Bulldogs football team.  In fact, one of the primary reasons why a trademark registration is so valuable is because it can create a clear link between brands and their members and fans.  Members and fans generally want to be associated with brands and will wear merchandise bearing their favorite brands.  (The exclusive rights granted to an owner of a trademark registered with the USPTO helps make this happen.  By granting an owner exclusive rights to use a trademark on particular goods or services, then it’s easier to avoid customer confusion as to the source of the goods and services. This in turn often strengthens brands by increasing brand awareness and public recognition).

Using trademarks as Membership Marks can raise some interesting situations regarding trademark use and infringement.  Here are two interesting situations raised by membership marks that are registered USPTO trademarks:

• Hells Angels, Example #1: The Hells Angels motorcycle club owns registered   trademarks which are valuable membership insignia and the Hells Angels, like all trademark owners, have the right to pursue folks and businesses who use their trademarks without permission (ie trademark infringers).  In a recent NY Times article, the trademark attorney for the Hells Angels addressed the issue of pursuing trademark infringers by stating that, “[t]he intent is not just to punish the infringers but to educate the public that the Hells Angels marques are well guarded and not generic and that they must not be infringed upon.”  This statement relates to a strategy for dealing with other folks or businesses who use the Hells Angels trademarks without permission or who use confusingly similar trademarks.
• Fresno State Bulldogs, Example #2: Fresno State University in California owns registered trademarks featuring their bulldog mascot.  Wearing merchandise produced by the University featuring the bulldog mascot and team name displays allegiance to the team – ie “fan membership insignia.”  A recent NY Times article reported that it’s not only wholesome football fans who are flocking to buy and wear jerseys, shirts, hats and other merchandise produced and sold by the University bearing the registered bulldog trademark… but that a violent street gang has also adopted the Fresno State Bulldogs trademark and apparel as a gang symbol.  Evidently, the gang is purchasing and using legitimate University shirts, jerseys and other merchandise bearing the registered Bulldogs trademark as a gang symbol indicating gang membership.  Buying legitimate University merchandise is obviously not trademark infringement; although, it will be interesting to see how the University develops a strategy for dealing with upholding its brand image.  Unfortunately, the University’s registered trademark is now playing a double “membership” role… indicating two drastically different types of membership.

These two situations highlight two vastly different circumstances involving membership marks that are registered USPTO trademarks.  Reading NY Times articles on both situations described above that were printed only 20 days apart inspired this blog post on trademarks that are used as membership insignia.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information see, USPTO Registration 1136494 for one of the Hells Angels’ trademark registrations; USPTO Serial Number 86050169 for one of Fresno State’s trademark applications;  Pride and Peril of a Logo, published in the NY Times on 11/9/13 by M. Wollan and Despite Outlaw Image, Hells Angels Sue Often, published in the NY Times on 11/29/13 by S.E. Kovaleski, and the USPTO Trademark Electronic Search System (TESS) which is a tool for searching the USPTO’s database of registered trademarks and prior pending applications at http://tess2.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

3D Printing – A New Dimension of Possible Copyright and Trademark Infringement (Scan or Design and Print 3D Objects) Reply

3D Printer

It’s possible to print in 3D by scanning an object to create a 3D model file… and then printing it with a 3D printer (be careful not to infringe a copyright, trademark or patent in the process).  The ability to scan an object with a laser to create a 3D model file is particularly interesting to me, because, it opens up a new dimension of (potential) intellectual property infringement.  For example, scanning and printing someone else’s original jewelry design could be copyright infringement.

3D printing is an additive process by which incredibly thin layers of material are ‘printed out’ and built up to create a three-dimensional object.  This is accomplished by using 3D model files to provide 3D printing instructions to 3D printers.  As you might guess, 3D model files can be generated in several ways including: 1) scanning an object, 2) using design software to create a design from scratch and 3) re-designing a scanned image by using design software.  For example, it would be possible to scan an engagement ring and scan a family pet and combine the two scans to replace the ring’s center stone with a miniature image the beloved pet.  (Perhaps not an example of something folks are rushing to do… but you get the idea.  The possible infringement comes into play if scanning and reproducing an object infringes a copyright, trademark or patent, like a copyrighted jewelry design).  The 3D scanner that I saw in action involved a slowly rotating pedestal and a laser scanner that was being used to scan a person and print out a miniature, plastic, 3D-action-figure portrait of the scanned person.

Interestingly, 3D printers can print in a wide range of materials including plastic, some medals, ceramic type materials that can be fired and even edible substances.  (The article I read about printed food didn’t sound too appetizing).

While this blog post is focused on mentioning the new dimension of intellectual property infringement  (including copyright, trademark and patent) that is possible with 3D printing, there are countless other possibilities available with 3D printing.  In fact, you may have read that Philadelphia has just become the first city in the US to ban the use of 3D printers to manufacture firearms.  On a more positive note, artists and engineers are designing and printing fascinating new works.  The Out of Hand exhibit at the Museum of Art and Design features some of these creative new works.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information, see also, Makerbot printers at www.makerbot.com; Shapeways 3D printing marketplace and community at www.shapeways.com; the Out of Hand exhibit at the Museum of Art and Design featuring artistic uses of 3D printing at http://madmuseum.org/exhibition/out-hand; news about Philadelphia’s ban at  www.forbes.com/sites/timworstall/2013/11/25/how-cute-philadelphia-passes-law-banning-3d-gun-printing; @iplegalfreebies and www.kasterlegal.com.

An Artist’s LOVE – can extend to COPYRIGHT 1

Have you read that the American Pop Artist Robert Indiana (famous for his “LOVE” with a tilted O) will be featured in a new exhibition at the Whitney Museum in NYC? Have you also read that he missed out on controlling all the rights to his famous “LOVE” work because he didn’t copyright it properly?

In a recent NY Times article, Mr Indiana spoke about being brokenhearted over not properly copyrighting his work:

…because ‘LOVE’ – with its tilted O – wasn’t properly copyrighted, it spread to all sorts of places and products [I] didn’t want. And that broke [my] heart. ‘Rip-offs have done a great harm to my own reputation.’

This is an important reminder to artists and creative folks to copyright your work! For a work to be eligible for copyright registration it must be original and “fixed in a tangible form.” This can include any original work, fixed in virtually any tangible form. For example, original copyrightable works can include: sculptures, drawings, photographs, artwork, music, poetry, graffiti, jewelry designs, motion pictures, video clips, translations, texts, manuscripts, recordings…. etc. And the requirement that the work be “fixed in a tangible form” can include traditional mediums such as paper, canvas, clay, DVDs, CDs… and less traditional mediums such as a napkin… scrap of paper… and probably even peanut butter.

Please take Mr. Indiana’s words to heart and copyright your work. For more information on how to copyright your work see my earlier post titled: “Copyright Protection Only Costs $35.”

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See, The US Copyright Office Website at: www.copyright.gov; for more information on the upcoming exhibit of Robert Indiana’s work in NYC www.whitney.org/Exhibitions/RobertIndiana, @iplegalfreebies and www.kasterlegal.com.

As a post script, I mentioned peanut butter above as a possible medium for fixing an original copyrightable work, because, there is a contemporary Double Mona Lisa work made out of PB&J – www.artnet.com/usernet/awc/awc_workdetail.

AT&T revises the process for Mobile Device Opt-Out of Data Sharing Reply

Many of you may already know that AT&T has made changes to their Privacy Policy to allow them to share more of your personal data (gathered on each of your devices) with advertisers and external marketing folks. (I posted a blog about this in July <click here to read it>).

This is a FOLLOW UP post regarding changes that AT&T has made to the Opt-Out process to simplify it and iron out the kinks.  AT&T has acknowledged that some of its customers (including me and maybe you too) had difficulty completing the Opt-Out process on their mobile devices and as a consequence AT&T has revised the process for Opting-Out on a mobile device.

Here are the new revised instructions that were emailed out by AT&T:

• From your AT&T mobile device you want to opt out, go to adworks.att.com/mobileoptout
• Make sure you are on the AT&T wireless network, and not on any Wi-Fi
• Choose the blue Opt-Out button. You should receive the following message: “Thank you. This device will not be receiving AT&T AdWorks Relevant Advertising”

I just went through these steps on my iPhone and received the promised confirmation message.  Simplifying this Opt-Out process and providing a confirmation message was a good move.  All AT&T customers should have received an email from AT&T giving notice of this revised Opt-Out process for mobile devices.  (THANKS to all of you who contacted AT&T to let them know that you were having difficulty with the initial Opt-Out process.  I have a hunch that this new revised Opt-Out was launched in response to the feedback we all provided).

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information on privacy policies see: http://wp.me/p10nNq-tf; http://wp.me/p10nNq-bL; http://wp.me/p10nNq-ni; and for more information on Opt-Out policies see: http://wp.me/p10nNq-6j ; @iplegalfreebies and www.kasterlegal.com.

Getting Paid for… Co-Creating awesome stuff like the game Twister and Superman Reply

Getting paid for creating wildly successful stuff can take many forms and is an important part of the creative process. Often stuff that becomes wildly successful (like the Superman comic and the game Twister) start out as humble creative endeavors created by two co-creators. For example:

• SUPERMAN was created by Seigel and Schuster who created a comic book out of four weeks worth of comic strips that they couldn’t sell. They sold the comic book along with their rights to the creation for $130. (long-running litigation has ensued regarding the existence, validity and scope of an agreement transferring the rights to Superman).
• TWISTER was created by Foley (a game designer) and Rabens (an artist) who were awarded a US Patent (No. 3,454,279) for their invention of an “apparatus for playing a game wherein the players constitute the game pieces.” Evidently Foley did not receive royalties for the game; however, he did negotiate a buyout and sold his rights. (According to a Mr. Foley’s obituary this past week, he accepted about $27,000 in a negotiated buyout).

It’s interesting to compare these deals. Did the creators have any idea that their creations would become iconic? Probably not. At least not in the case of Superman. If Superman’s co-creators had known how famous their creation would become, they probably would have negotiated a higher price, residual rights, royalties and possibly reserved merchandising rights.

Personally, I am a big fan of both Superman and Twister! I am in awe of the creative minds who created these gems… and I encourage folks to negotiate creative deals to maximize revenue from their creations. You never know…. your creation could become a cultural icon.

For more information on the ongoing Superman litigation, see also, http://dockets.justia.com/docket/california/cacdce/2:2004cv08400/166317/; http://robot6.comicbookresources.com/2013/03/superman-legal-battle-isnt-over-yet-siegels-try-a-new-strategy/; http://www.businessweek.com/articles/2013-06-13/marc-toberoff-supermans-lawyer; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

Enterprising Thai student gives book publishers a run for their $$$$ Reply

An enterprising PhD student from Thailand discovered that he could make a profit by reselling textbooks on eBay that were bought in Thailand and shipped to him in the U.S. It’s important to note that the textbooks being bought and shipped to the student were legitimate copies of textbooks that were being manufactured and sold in Asia at a much lower price than the same textbooks are sold here in the U.S. (hence the profit margin). The student was sued by a textbook publisher for copyright infringement and the lawsuit made its way to the U.S. Supreme Court in March 2013.

The Arguments on both sides:

THE TEXTBOOK PUBLISHER argued that copies of the textbooks that were manufactured and sold outside the U.S. could not be imported and resold here in the U.S without their permission.

THE STUDENT argued that legitimate copies of the textbooks could be bought and resold freely as per the “first-sale doctrine” of the U.S. Copyright law.

The first-sale doctrine is codified in Section 109 of the Copyright Act and states that, “the owner of a particular copy…. lawfully made under this title… is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.”

In March, the U.S. Supreme Court ruled for the enterprising student. Promoting free trade was the primary theme of the court’s opinion. The court held that Section 109 of the Copyright Act does not include a geographical limitation on the resale of legitimately purchased goods containing copyrighted content or materials. If permission of each and every copyright owner was needed to resell items made over-seas, free trade would be impaired. The court reiterated that the intention of the Copyright Act is to “promote the progress of science and useful arts” and is not to impair free trade nor restrict the use and resale of many lawfully purchased items.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See also: KIRTSAENG v. JOHN WILEY & SONS, INC. The US Supreme Court opinion available by clicking here and at www.oyez.org; Justice Breyer delivered the opinion for the Supreme Court: www.law.cornell.edu; Copyright Act, Section 109: www.copyright.gov; @iplegalfreebies and www.kasterlegal.com.

Sojourner Truth…. copyright owner (among other heroic acts) Reply

Sojourner Truth registered her historic image “I sell the shadow to support the substance” with the US Copyright Office in 1864.   To me, it’s remarkable that in addition to Sojourner Truth’s famed work as an African-American abolitionist and advocate for women’s rights… she was also a copyright owner.

Back in 1864 when Sojourner Truth registered her image with the US Copyright Office, the copyright laws were different than they are today… and claiming copyright protection involved more formalities.  However, the basic principles of copyright protection were the same: controlling the copying, printing, reprinting and publishing of a registered work.  Evidently, Sojourner Truth sold copies of her image to raise money for the abolitionist movement. (ie a good motivation to control the use, copying, printing and reprinting of the image with copyright registration).

While I have always held Sojourner Truth in high regard for her historic advocacy work, I’m adding copyright owner to the list of her heroic acts.

(The copyright notice on Sojourner Truth’s historic image caught my eye while visiting a recent exhibition of Civil War Photography at the Metropolitan Museum of Art).

See also, www.nps.gov/wori/historyculture/sojourner-truth.htm; US Copyright Act of 1790 at www.copyright.gov/history/1790act; www.loc.gov/pictures/item/98501244/; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

Keep Calm and Carry On (#$&!@!) a Trademark Dispute 4

A trademark dispute is brewing around the phrase “Keep Calm and Carry On.” Contrary to the intention of the phrase… folks in the UK are fighting over the exclusive right to own the phrase as a registered EU trademark.

The phrase originated as part of a government propaganda campaign in the UK during World War II (not very popular at the time) and has morphed into a marketing phenomenon within the last decade. Evidently, a long-forgotten propaganda poster was rediscovered by a bookshop owner in England thirteen years ago. Upon discovery, the bookshop owner framed and hung the poster in his shop, Barter Books… and customers began noticing the catchy phrase on the poster… and the bookshop owner began creating and selling merchandise. Then along came another Englishman who trademarked the phrase within the EU and began creating and selling more merchandise. (See Application No. 010494441). Hence the brouhaha begins.

Barter Books has challenged the EU trademark registration of the phrase “Keep Calm and Carry On”… claiming that the trademark registration is an unjust monopoly over a piece of history. The legal opposition to cancel the trademark registration should be decided soon. In the meantime… please remember to heed the warning to Keep Calm and Carry On.

For more information: Check out Barter Books at www.barterbooks.co.uk and www.keepcalmhome.com; EU Community trademarks can be searched at:http://oami.europa.eu; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq. LL.M

vk@kasterlegal.com

Three Myths about collecting information from website users Reply

MYTH: collecting just an email address from website users is unregulated

MYTH: collecting information from children using a website is unregulated

MYTH: how website users who provide their email address are contacted is unregulated

ALL THREE OF THESE STATEMENTS ARE MYTHS. None of these are instances when collecting information from website users is unregulated.

There are laws in place regulating how information can be collected from website users. If any personal information is being collected from website users it is important to have a customized “Privacy Policy” and “Terms of Use” for your website. A Privacy Policy and Terms of Use provide an important function on a website. They give details about what information is being collected, how it is stored and used… and they operate as a digital agreement between the website user and the website operator (just to name a few of the functions).

For more information see: Privacy Policies are often required on Commercial Websites: http://wp.me/p10nNq-bL; The California Online Privacy Protection Act: http://oag.ca.gov/privacy/COPPA; CAN-SPAM Act: Compliance Guide for Business: http://www.business.ftc.gov/documents/bus61-can-spam-act-compliance-guide-business; Children’s Online Privacy: http://business.ftc.gov/privacy-and-security/children%E2%80%99s-online-privacy; EU ‘safe harbor’ arrangement: http://www.ita.doc.gov/td/ecom/menu.html; @iplegalfreebies and www.kasterlegal.com.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com