No Protection for Short Phrase T-Shirts

FUNNY ASS SHIRT by Douglas Muth from Flickr (Creative Commons License)

I regularly get questions from people who sell shirts on Etsy, Café Press, or a similar website and they claim that another user is stealing their design. When I look more closely at the situation, I see all the person is selling is shirts with a short phrase, in a common font, and no other artwork or design elements. Many times, I have the unfortunate responsibility of telling them that there’s no intellectual property in their design, so there’s no infringement (that’s legalese for “stealing”).

No Copyright in Short Phrases
Copyright applies to original works of authorships when they are fixed in a tangible medium. A t-shirt is a tangible medium, and it’s possible to have an original work on a garment. However, short phrases aren’t original works, so the act of merely printing one on a shirt does not create a copyright-protected article.

If that’s all you’re selling – word or a phrase on a shirt – there’s likely nothing you can do (from a copyright perspective) to stop your competition from selling a shirt with the same phrase on it. If you look on any of these DIY shirt and craft sites, you’ll see the same phrases on shirts from different sellers. There’s no copyright protection for words, images, or phrases like “geek,” “reasonable person,” “Introverts Unite! Separately in your own homes,” and even more creative phrases like “terminally soulless douche canoe.”

The Anti-Titanic Shirt

This used to be less of a problem before we had Teespring, Zazzle, and sites that make it easy to create and sell shirts and whatnot. In the past, if you wanted to sell a shirt, you had design it, have it printed, and then sell them in shop or on the street, or if you had html skills, you could create a website and people could mail you a check for a shirt. That’s what my friend, Peter Shankman, did when he sold anti-Titanic shirts in 1998. He started selling them in Times Square and then sold them online. He was a success, in part, because he had no competition.

What Could be Infringement
Every t-shirt design on Etsy is not up for grabs. Copyright does not protect short phrases, but it does protect designs with original artwork on them. Additionally, copyright protects the images you post of your shirts on your site. If you see another seller using your photos, that would likely be infringement (assuming it’s your photo). Sending a DMCA takedown may be sufficient to get them removed from their online store.

The other thing to watch for is trademark infringement. A seller can use a short phrase as a trademark to brand their wares. They can also create a logo that they put on their products. If you see someone using your trademark or a mark that is similarly close to yours, that could be infringement and worth investigating.

Beat the Competition in the Marketplace
For anyone who is selling these types of shirts, the best way to deal with your competition is be better than they are. Give your customers a reason to buy from you than from another seller, or having it made at a t-shirt shop. It could be your prices, the quality of the garments, or something about your company that makes you more desirable than the others.

Beyond that, you may want to consider upping your t-shirt game by creating or purchasing designs that will be protected by the Copyright Act.

Copyright is an area of the law with many gray areas, so if you’re having legal issues regarding your copyright rights, you can contact me directly or an intellectual property lawyer in your community. I regularly post about copyright and other IP issues on TwitterFacebookYouTube, and LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Trademarks: Register or Rebrand

WordPress Swag by Caspar Hübinger from Flickr (Creative Commons License)

One of my entrepreneur friends recently asked me if he “had to” register the logo for his company. I responded with, “How much would it suck if you had to rebrand?”

Why Register your Trademark
Your trademark is the name, logo, and other branding you put on your products so consumers can tell the difference between your brand and your competition’s. When you have a registered trademark for your brand, you can stop anyone from entering the market with a similar brand on a similar product as you. The law doesn’t like it when your competition tries to ride your coattails by looking too similar to your brand. When you register your trademark, your rights extend to everywhere in the United States, even if you’re not doing business everywhere in the country yet.

If you don’t register your brand, you can only get “common law” trademark rights that are limited to where you’re doing business with your mark. Your competition can use the same or similar brand where you haven’t established yourself. And if they register the brand before you, you may find yourself frozen only to your established marketplace, which may be quite small. Just ask the original Burger King restaurant what that’s like.

Cheaper than Rebranding
What does it cost to have a logo designed?
What about a website?

The fee to submit a trademark application to the U.S. Patent and Trademark Office (USPTO) is $225-400, if it’s only for one type of product or service. Even with the fee to have a proper trademark lawyer submit and track the application, it’s often cheaper to apply for a registered trademark instead of rebrand. If someone else registers your trademark before you, you may be forced to rebrand if you want to continue to grow your business and expand your marketplace to reach more potential customers.

Brand Theft Happens
I have seen and worked on a number of situations where a company could have avoided a lot of heartache and legal bills if they had registered their trademark, because their competition registered the same or similar trademark before they did. Turner Barr essentially had his trademark, Around the World in 80 Jobs, stolen out from under him. He had to cease operations to address the situation. Thankfully for him, his story had a happy ending. Other companies are not as lucky.

A substantial portion of my work involves analyzing, registering, and challenging trademarks. If you need help with your trademark situation, you can contact me directly. I also post about these issues on TwitterFacebookYouTube, and LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Legal Issues with Open Photoshoots

Parkwood Photography Studios, used with permission

Last week, I went to an open photoshoot/happy hour at Parkwood Studios. (They have a gorgeous space!) It’s a free monthly event for photographers and models of all skill levels and experience. There was an area set up with lights where anyone could model and shoot photos. The purpose is to give everyone an introductory experience working with a model in a studio environment. There was not a model release or TFP agreement for this event.

I went to this to network and to model. As a lawyer, I knew what I was getting into in regards to copyright and image rights. Of course, my analytical brain couldn’t stop strategizing what I’d do to integrate legal protection and information without disturbing the spirit of the event.

Who’s At Risk, Who’s Protected
There are three groups who should be interested in protecting themselves at an open shoot: the models, the photographers, and the studio. If I represented a studio that hosted an open shoot, I’d recommend having a release that states the studio is not responsible for anyone’s behavior. If there’s a dispute between a model and a photographer, that’s an issue to be resolved between the two of them.

One of my images from the open shoot. I look like a action hero.

Model Release and Copyright Notice
Even in the photography/modeling industry, a lot of people do not understand copyright and image rights. In an open photo shoot, the model and photographer exchange their time, talents, and the opportunity to practice their respective crafts. Unless stated otherwise in a written agreement, whomever took the photo owns the copyright.

The expectation at these events is that photographers and models exchange contact information so the photographer can share images with them, and that the models are allowed to put the images in their portfolios or share on social media. I suspect the studio would also want a license to the use any images taken at the event that they receive or that are posted to their social media to promote future events or the studio.

No Guarantees
The one of the complaint I heard from past events is models saying a photographers who took photos of them never sent any images. While that is poor form, the only way I can think to legally work around this is to have a “no guarantee” clause. There’s no guarantee the photographer will send the model photos and there’s no guarantee the photographer will get the shot they want.

Code of Conduct
Since this is an event for all experience levels – including fledglings – I recommend having a code of conduct that applies to everyone and the studio’s equipment. This would include basic things like “Always ask permission before touching a model,” “Don’t touch the lights or any equipment that’s not set up for use at this shoot,” “Give constructive feedback,” and “Be respectful – we’re all here to learn and have fun.” A lot of these are common sense, but it’s good to state the obvious for people for whom it might be their first time shooting in this type of environment.

For studios like Parkwood that host regular events, I suggest creating reusable poster-sized copies of the rules and release and put it on the door leading to the photoshoot area with a notice that says by entering the room, you agree to these expectations. For anyone who wants to shoot photos or model, put a clipboard with a dated copy of the agreement and a signature page where everyone must agree to the rules before they’re allowed to participate. This serves multiple purposes:

  • It gives photographers and models experience with reading and signing these agreements.
  • It creates expectations and helps avoid conflict for all involved.

I get questions every day about photography, image rights, and copyright. For anyone who works as a photographer or model, it’s imperative that you understand these topics. Many disputes can be avoided with well-written contracts and accurate information. I’m constantly doing work in this area, so if you want to keep up with what I’m doing or if you need help, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Copyright License for Commissioned Art

“and the years have wings, detail” by Olivia Kirby from Flickr (Creative Commons License)

There are services that will print your photos and other artwork onto canvas – even in Walgreens. I recently heard of a situation where a customer commissioned an artist to create a portrait. The artist created the work and sent it to the customer as a JPG file, that the customer could use to get it printed onto paper or canvas. This may be a more efficient and cost-effective way for artists to create original pieces for customers.

The customer took the image to be printed on canvas, and the photo processor refused to do it without a release from the artist. I’d never heard of a printer requiring this, but the customer encountered this problem when they tried to use two different printers. To avoid such problems and delays in the future, the artist should provide a license with the JPG file for printing in case the customer is required to provide it.

Photo Processors and Copyright Infringement
Should photo processors be concerned about customers using their services to make unlawful copies of another person’s work? Probably not. I suspect a customer that comes in with a JPG to create one photo product is likely not committing copyright infringement. Of course, there’s an exception for art that is so well-known that a reasonable person would recognize the likelihood of infringement.

One way a photo processor could protect themselves from accusations of contributory copyright infringement would be to include a check box on the order form where the customer attests that they own or have permission to use the image in this way and indemnify the photo processor in the event of infringement lawsuit and with reimbursement for all related costs and damages. I know the company I use to print my custom t-shirts has this on their order forms.

License for Commissioned Work
This problem sounds like it’s easy to fix: the artist can add a licensing provision to the agreement that specifies upon payment in full, the customer will receive a JPG of the work and a license for how the customer may use it. That provision can specify that the artist retains ownership of the copyright and the customer may have the unaltered JPG printed on paper, canvas, and any other permitted medium for personal use (which may involve soliciting the services of a third party printer). That should hopefully be enough to satisfy the concerns of any printing service.

The artist may want to add other licensing terms, such as it’s a non-exclusive, paid-in-full, royalty-free license, whether the license is perpetual or time limited, how many prints the customer may make, and any other permissions or restrictions the artist wants to impose of their work. An intellectual property lawyer can provide more information about what provisions to include in such an agreement.

I was surprised to hear about this situation, especially if the customer only asked for one print. I would expect the order to be more extreme to raise a red flag for a printer, but on the other hand, I’m pleased to see printers being mindful about what they’re being asked to create. The laws and rights related to intellectual property are complicated and always situation-dependent. If you want to connect with me about your intellectual property rights as a consumer or an artist, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Using Movie Clips in your YouTube Videos

Wedding Crashers by Kurt Bauschardt from Flickr (Creative Commons license)

Some people incorporate clips from mainstream movies into their YouTube videos. Depending on the circumstances, it may or may not be legal.

Movie Studio’s Rights
Whoever owns the copyright in the movie has the exclusive right to control where the work can be copied, distributed, displayed, performed, and what derivative works can be made from it. This applies to the whole film and clips of it. The copyright owner is also the only one who can come after someone for copyright infringement. So, if they don’t know or don’t care about what another person is doing with their work, that person will never get in trouble.

What about Fair Use?
The powers that wrote the Copyright Act understood that existing artwork inspire other artists to create new works. To that effect, they created the fair use provision of the copyright law (17 U.S.C. § 107 if you want to look it up).

The fair use law allows a person to use another’s work for the purpose of criticism, commentary, research, and teaching – often in ways that thoughtfully add to the existing work. The law provides four factors that the court may consider in determining whether a use is copyright infringement or fair use (which I turned into the handy mnemonic device PAIN), but these are merely points of consideration.

The fair use factors are not a mathematical equation to use to get a definite answer. The only way to know for certain if a use qualifies as fair use would be if there’s a lawsuit and the court makes a ruling on the matter. However, if the use of another’s work is transformative and doesn’t become a substitute for the original work in the market, there’s a good chance it’s fair use.

One way to avoid the issue about whether using a clip is copyright infringement or fair use, would be to get permission to use the clip by purchasing a license. Without this permission, there’s a risk that the copyright owner will order your video to be removed until the offending clip is removed.

Using a Movie Clip – Good Idea or Bad Idea?
If a client asked me about using a movie clip for a purpose other than criticism, commentary, as a teaching demonstrative, or an original compilation with other works, I’d challenge them to explain why they want to use that clip and what value it adds to their work. I’d also encourage them to at least do their homework on the copyright owner to see if they have a track record of going after people who use clips of their work without permission.

Ultimately, I respect my clients’ choices, but I try to help them make informed decisions about the risk they’re accepting when they use another’s work. Copyright and fair use situations are always complicated and always depend on the specific circumstances. If you want to connect with me and hear more thoughts about copyright, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Getty Images Skirts $1B Lawsuit

Victory by Quinn Dombrowski from Flickr (Creative Commons License)

Victory by Quinn Dombrowski from Flickr (Creative Commons License)

Earlier this year, Getty Images was sued for $1 billion (yes, that’s billion) by photographer Carol Highsmith.

Getty Images had sent Highsmith a letter and a bill, claiming that she was using one of their images without buying the requisite license. (Getty’s known for doing this.) It turns out Getty sent her a bill for using an image that she had taken herself. In fact, Getty was selling licenses for thousands of her images. Highsmith responded by suing Getty for $1 billion for violating her rights under the Federal Copyright Act and state level laws related to licensing.

Highsmith donated over eighteen thousand images to the Library of Congress and made available to others to copy and display for free starting in 1988. Her claims were based on the fact that Getty used her work without attribution and added their own watermark. In my previous post about this case, you can see the math that shows that $1B is a reasonable amount to request for damages given the number of photos in question.

I previously wrote that this will be a fun case to watch, assuming it goes to trial and doesn’t end a settlement with a non-disclosure agreement. But alas, it wasn’t meant to be.

The Court granted Getty and the other Defendants’ Motion to Dismiss the federal claims, leaving on the state-level claims in the case. The Parties apparently came to an agreement amongst themselves, with a non-disclosure provision, and stipulated to having the remaining claims dismissed with prejudice (meaning Highsmith can’t file this lawsuit again for these claims). The dismissal also directs each side to be responsible for their own attorneys’ fees and costs.

Judge Rakoff wrote that he will release a memorandum explaining his ruling “in due course.” I expect it will be an interesting read.

I feel for Highsmith. Not only did she feel like her rights were violated, but the Court disagreed with her and told her she had to pay her attorneys’ fees. That’s the risk a person runs when they pursue a lawsuit – the Court could say you’re wrong, and you had to pay possibly thousands or tens of thousands of dollars to get that answer.

So what does this mean for future cases that are similar to this? It’s hard to say, though it appears that the fact that Highsmith made her work available for public use impacted her argument that she had rights in the images in question. I don’t expect this to effect artists who retain their copyright rights and make their work available for free through Creative Commons and similar means. (Thank you to all the artists who do this. I am forever grateful for your generosity.)

There are a lot of issues that come into play surrounding photography, image rights, and copyright. If you want to chat more about these topics, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Turnabout is Fair Play – Getty Sued for $1B for Copyright Violations

The Trees are Laughing at Us by daspunkt from Flickr (Creative Commons License)

The Trees are Laughing at Us by daspunkt from Flickr (Creative Commons License)

Getty Images is known for sending letters to people suspected of using their images without purchasing a license. These demand letters essentially say, “By using our image, you’ve agreed to pay for a license. Pay $XXX by this date or we will sue you.”

They may have started the trend of other photographers sending similar demand letters when people use their images without permission. (I’ve sent these type of letters and counseled clients who have received them – usually from pulling images from a Google Image search without verifying that they had permission to use it.)

Getty sent such a letter to documentary photographer Carol Highsmith, claiming that she was violating their terms for using an image. Here’s the catch – it was a photograph that Highsmith took herself and previously shared with the Library of Congress to allow free use of her work by the general public. Highsmith has shared tens of thousands of images with the public through the Library of Congress since 1988.

Highsmith learned that Getty is claiming copyright rights to thousands of her images work and demanding payment for licenses, often without attribution to her, and adding “false watermarks” to the images. She filed a $1,000,000,000 (that’s $1B with a “B”) copyright infringement lawsuit against these agencies for the “gross misuse” of 18,755 of her photographs.

That’s a lot of photographs.
I hope they have good insurance.

But $1B?! Really?!
Actually, yes. In this case, suing for $1B makes perfect sense.

A party who adds or removes a watermark from a photo to avoid detection for copyright infringement can be fined up to $25,000 per image in addition to other financial damages for copyright infringement.
$25,000/image x 18,755 images = $468,875,000

And if a party is found to have violated this law in the last three years – which Getty has – the complaining party can ask for triple the damages.
$468,875,000 x 3 = $1,406,625,000

Looking at this, it’s easy to see how easy it is for Highsmith to reasonably request over $1B in damages. She’s also requested a permanent injunction to prohibit future use of images by Getty and the other Defendants and attorneys’ fees.

You can read the full complaint filed by Highsmith against Getty in New York Federal Court here.
So far, Getty claims they will defend themselves “vigorously.”

This could be a fun case to watch. If this case doesn’t go to trial (and most cases don’t), I hope the settlement isn’t kept completely secret behind a non-disclosure agreement. One of the recommendations I make to anyone who is a professional creative is determine in advance how you want to respond when your work is used without your permission and plan accordingly. For many people, it’s not if their work is stolen, but when.

There are a lot of issues that come into play surrounding photography, image rights, and copyright. If you want to chat more about these topics, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

EDIT: The previous version of this post stated that Highsmith released her work to public domain. My apologies. Highsmith retains the copyright in her work, but allows others to freely use it through the Library of Congress.

Response to Star Trek Fan Film Guidelines

11/6/2015 - Taurid Meteor Shower - Joshua Tree , CA by Channone Arif from Flickr (Creative Commons License)

11/6/2015 – Taurid Meteor Shower – Joshua Tree , CA by Channone Arif from Flickr (Creative Commons License)

In light of the recent lawsuit between CBS and Paramount Pictures and a Star Trek fan film creator, CBS and Paramount released guidelines regarding fan-created films.

Previously, fan fiction movies were limited to camcorders and sets people created in their backyards, but now with computer animation and other technology, a fan could create an impressive work of fan fiction. You can see some earlier Trek fan fiction on the documentary Trekkies.

A friend asked me to weigh in on these guidelines. As a die-hard Star Trek fan, my legal interpretation may be slightly biased in favor of promoting fandom. Below are the guidelines in full with my comments in italics:

CBS and Paramount Pictures are big believers in reasonable fan fiction and fan creativity (I’m glad you support fan art/fiction. Star Trek is known for inviting fan-submitted scripts, but what do you mean by “reasonable?”), and, in particular, want amateur fan filmmakers to showcase their passion for Star Trek. Therefore, CBS and Paramount Pictures will not object to, or take legal action against, Star Trek fan productions that are non-professional and amateur and meet the following guidelines. (It’s nice when people tell you how not to get sued.)

Guidelines for Avoiding Objections:
1. The fan production must be less than 15 minutes for a single self-contained story, or no more than 2 segments, episodes or parts, not to exceed 30 minutes total, with no additional seasons, episodes, parts, sequels or remakes. Is this because you don’t want fan fiction to compete with the TV series and movies? I wonder if someone is less likely to make significant money from a one-off video vs. a series. I wonder if the copyright holder would have objected if Melissa Hunter only made one Adult Wednesday Addams video instead of two seasons.)

2. The title of the fan production or any parts cannot include the name “Star Trek.” However, the title must contain a subtitle with the phrase: “A STAR TREK FAN PRODUCTION” in plain typeface. The fan production cannot use the term “official” in either its title or subtitle or in any marketing, promotions or social media for the fan production. (This makes sense from a trademark perspective. With brands creating content in various genres, it’s important to avoid confusing viewers about what is/is not made by the brand vs fans.)

3. The content in the fan production must be original, not reproductions, recreations or clips from any Star Trek production. If non-Star Trek third party content is used, all necessary permissions for any third party content should be obtained in writing. (This makes sense because of copyright. It’s ok to copy ideas, but not the original work itself. This may be overstepping a little bit depending on how they define “recreations.”)

In my Starfleet uniform and Trill Make-up, 2000

In my Starfleet uniform and Trill Make-up, 2000

4. If the fan production uses commercially-available Star Trek uniforms, accessories, toys and props, these items must be official merchandise and not bootleg items or imitations of such commercially available products. (I understand that they want to promote their partners and don’t want fans being misled. However, it makes more sense to require disclosure of sources of props and costumes. Some fans prefer to have a tailor custom-make uniforms instead of buying them from commercial sources. And thank you for calling them uniforms, not costumes – as a fan and Starfleet officer myself, I appreciate that.)

5. The fan production must be a real “fan” production, i.e., creators, actors and all other participants must be amateurs, cannot be compensated for their services, and cannot be currently or previously employed on any Star Trek series, films, production of DVDs or with any of CBS or Paramount Pictures’ licensees. (What?! This seems overreaching and overly broad, especially considering that non-compete agreements are not permitted in California. Past and current employees can have non-disclosure agreements that limit their participation in other projects. Even a hobbyist has to pay for certain things – like a musician paying for studio time.)

6. The fan production must be non-commercial (This makes sense. Many artists approve of fan art as long as the person isn’t selling their work.):

  • CBS and Paramount Pictures do not object to limited fundraising for the creation of a fan production, whether 1 or 2 segments and consistent with these guidelines, so long as the total amount does not exceed $50,000, including all platform fees, and when the $50,000 goal is reached, all fundraising must cease. (Thank you for understanding that hobbyists have expenses – despite your contradictory term above.)
  • The fan production must only be exhibited or distributed on a no-charge basis and/or shared via streaming services without generating revenue. (Ok – so you can’t submit your video to film festivals or run ads on it if you post on YouTube.)
  • The fan production cannot be distributed in a physical format such as DVD or Blu-ray. (This makes sense given current technology. They want to protect their intellectual property.)
  • The fan production cannot be used to derive advertising revenue including, but not limited to, through for example, the use of pre or post-roll advertising, click-through advertising banners, that is associated with the fan production. (Fair enough.)
  • No unlicensed Star Trek-related or fan production-related merchandise or services can be offered for sale or given away as premiums, perks or rewards or in connection with the fan production fundraising. (This makes sense in terms of protecting their intellectual property, and also makes it more challenging to use fundraising sites.)
  • The fan production cannot derive revenue by selling or licensing fan-created production sets, props or costumes. (Agreed. This makes sense.)

7. The fan production must be family friendly and suitable for public presentation. Videos must not include profanity, nudity, obscenity, pornography, depictions of drugs, alcohol, tobacco, or any harmful or illegal activity, or any material that is offensive, fraudulent, defamatory, libelous, disparaging, sexually explicit, threatening, hateful, or any other inappropriate content. The content of the fan production cannot violate any individual’s right of privacy. (I understand no porn, but no illegal activities? What are the bad guys supposed to do? Even Star Trek episodes and films depictions of tobacco and alcohol and the films contain the occasional swear word.)

8. The fan production must display the following disclaimer in the on-screen credits of the fan productions and on any marketing material including the fan production website or page hosting the fan production:

“Star Trek and all related marks, logos and characters are solely owned by CBS Studios Inc. This fan production is not endorsed by, sponsored by, nor affiliated with CBS, Paramount Pictures, or any other Star Trek franchise, and is a non-commercial fan-made film intended for recreational use. No commercial exhibition or distribution is permitted. No alleged independent rights will be asserted against CBS or Paramount Pictures.” (This makes sense, but the last sentence suggests that CBS and Paramount may be able to use fan-created content without obtaining the creators’ permission.)

Hanging with the Klingons, Grand Slam Star Trek Convention, 2001

Hanging with the Klingons, Grand Slam Star Trek Convention, 2001

9. Creators of fan productions must not seek to register their works, nor any elements of the works, under copyright or trademark law. (What about the fans’ rights to protect their original works of authorship and their brands that don’t infringe on CBS or Paramount’s rights?)

10. Fan productions cannot create or imply any association or endorsement by CBS or Paramount Pictures. (Agreed.)

CBS and Paramount Pictures reserve the right to revise, revoke and/or withdraw these guidelines at any time in their own discretion. These guidelines are not a license and do not constitute approval or authorization of any fan productions or a waiver of any rights that CBS or Paramount Pictures may have with respect to fan fiction created outside of these guidelines. (This makes sense as long as CBS and Paramount don’t change the rules and go after a fan film creator who reasonably complied with the guidelines as written at that time.)

I appreciate that CBS and Paramount Pictures’ desire to protect their intellectual property and that put out guidelines to further this goal, but I wish they would be more fan-friendly. Hopefully this is only an over-zealous reaction to the recent lawsuit and not a sign of future legal battles between Star Trek and their fans.

If you have questions about the legalities of fan art/fiction or you just want to geek out about Star Trek, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

What Went Wrong with Fate Brewing Company

Photo Courtesy of Fate Brewing Company (Scottsdale, AZ)

Photo Courtesy of Fate Brewing Company (Scottsdale, AZ)

Earlier this month, Fate Brewing Company announced that they were changing their name to McFate Brewing Company.
Wait…what?! Is this awesome local brewery turning itself into some type of fast food brewery?
No, but they ran into a legal snag that forced the name change.

In 2012, Fate Brewing Company opened in Arizona. In 2013, someone else opened Fate Brewing Company in Boulder, Colorado. In legalese, the Fate Arizona is called the “senior user” of the name since they opened first and the Fate Colorado is the “junior user.” Despite being the junior user, Fate Colorado sued Fate Arizona for trademark infringement.

How Is This Allowed?
Easy: Fate Colorado registered the trademark “Fate Brewing Company” with the U.S. Patent and Trademark Office (USPTO). It’s the Burger King situation all over again.

By doing business first, Fate Arizona had rights to use “Fate Brewing Company” for beer and restaurant services, but since they didn’t register their trademark with the USPTO, their rights only extended to the geographic area where they did business. When Fate Colorado got their registered trademark, they obtained the exclusive right to use “Fate Brewing Company” for beer and restaurant services everywhere in the U.S. except where Fate Arizona had an established market. Likewise, Fate Arizona couldn’t expand its market beyond its established boundaries without infringing Fate Colorado’s rights.

I suspect Fate Colorado sued Fate Arizona for trademark infringement in part because their trademark was granted in 2013 and Fate Arizona South opened in 2015. Fate Colorado could have interpreted the new location as a market expansion that violated their trademark rights.

New Logo for McFate Brewing Company - opening June 25, 2016

New Logo for McFate Brewing Company, Photo courtesy of Fate Brewing Company

What’s Next for Fate Arizona?
Even though Fate Arizona could have made a legal argument that they had the right to use the name as the “senior user,” they have opted to take the high road to rebrand rather than spend hundreds of hours and thousands of dollars on this legal fight. The re-branding party for McFate Brewing Company (named after the owner, Steve McFate) is scheduled for June 25, 2016 according to Fate Arizona’s Facebook page.

I hope Fate Colorado wasn’t a jerk about this process. A company has an obligation to protect its intellectual property or risk losing it, but there is more than one way to pen a cease and desist letter.

How Could Fate Arizona have Avoided This Problem?
Yes. Fate Arizona could have beaten Fate Colorado to the USPTO and filed a trademark application before they did. They could have staked their claim to the name and gained exclusive right to use the name nationwide, shutting down Fate Colorado or forcing them to rebrand from their start.

Many new businesses are more concerned about getting off the ground than federal trademark filings, especially when the business only has aspirations of being a local brand. Unfortunately, this leaves them vulnerable to being boxed in geographically, called into court, or forced to rebrand like it did here.

If you have questions about your company’s trademark or how to select a trademark for your new venture, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that is available only to people on my mailing list, by subscribing here.

Starting a Comic Book – What Does it Cost?

Atom vs. Ant-Man (334/365) by JD Hancock from Flickr (Creative Commons License)

Atom vs. Ant-Man (334/365) by JD Hancock from Flickr (Creative Commons License)

I had the privilege of doing two panels at Phoenix Comicon this year: Fan Art/Fiction and Fair Use and Comic Book Creator Rights. The latter was a panel with writer/artist Josh Blaylock. He has experience licensing others’ work and creating his own.

Someone in the audience asked us how much a person should set aside to cover legal fees when starting a comic book.

Create Quality First
If your goal is to create a comic book and possibly a business from it, start by working on your craft. You won’t have any legal issues if no one cares what you’re making.

Start with a Consultation
When you’re ready to take your work from a hobby to a professional endeavor, schedule a consultation with a lawyer. Choose someone with experience in entrepreneurship and intellectual property – business formation, copyright, contracts, and trademarks. You need someone who can help you understand when you need a lawyer. Expect to pay $200-350/hour for a lawyer’s time, more depending on where you live and the person’s experience level.

It doesn’t cost much to get started with a new venture, but you do want to be thoughtful about what you can afford and act accordingly. A good lawyer will respect your budget and tell you what you can do on your own, and when it’s imperative to hire a lawyer. For instance, in many states, it’s easy to file your own business entity. Check with your state’s corporation commission for instructions and the forms. In Arizona, you can file an LLC and complete the requisite publication for less than $100.

Nuts and Bolts information by Josh Blaylock

Nuts and Bolts information by Josh Blaylock

Protect your Intellectual Property
The most valuable asset in your work is your intellectual property. Before you fall in love with a name for your comic book, run a search on the USPTO trademark database to verify that someone else hasn’t claimed the same or a similar name. Even if you can’t afford the $225-325 filing fee to register your trademark at first, you can put a superscript “TM” next to your work’s name, logo, and anything else you claim as a trademark. The USPTO has videos about how to submit a trademark application if you want to try to file your own, but I usually recommend that clients have a lawyer shepherd their application through the process. If you want to do this, expect to pay an additional $1,000 for their time.

In regards to copyright, I tell my clients, it’s not if your work gets stolen, but when so plan accordingly. For a new comic book creator, my recommendation is to register each edition with the U.S. Copyright Office. Their website is not the most user-friendly experience, but you can hire a lawyer for an hour to walk you through your first registration and then you can submit your subsequent copyright applications by yourself. The filing fee for a single work is $35-55.

Manage Relationships with Contracts
Every relationship related to your business should be documented with a written signed contract. This applies to co-owners of your business, writers, artists, colorists, licensors, licensees, vendors, and if your comic book turns into a job offer, your employment contract. Contracts are relationship-management documents. They keep everyone on the same page in regards to expectations, compensation, ownership, and they provide a course of action if there is ever a dispute. A contract is an investment and worth the cost to hire a competent lawyer to write or review your document to ensure it is effective for your needs.

Additionally, every entrepreneur should watch the video Fuck You, Pay Me, featuring Mike Monteiro and Gabe Levine. They have excellent advice for all entrepreneurs, especially those who work in creative services.

If you want more information about the nuts and bolts of starting a comic book, check out Josh Blaylock’s book How to Self-Publish Comics: Not Just Create Them. If you want more information about the legalities of starting a business or working in the creative arts, you can contact me directly or connect with me on TwitterFacebookYouTube, or LinkedIn. You can also get access to more exclusive content that’s shared only with my mailing list, by subscribing to the firm’s newsletter.