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Not So Fast – “Happy Birthday To You” May Not Be in the Public Domain

The World’s Most popular Song

You all know the tune, so why do you rarely hear the song Happy Birthday To You in movies and on television? The reason is that from 1988 until yesterday Warner/Chappell Music, Inc. had been demanding royalties on the lyrics to the song. 1988 was the year Warner/Chappell purchased purchased Birchtree Ltd., the purported owner of the copyright in the lyrics, for an estimated $25 million, placing an estimated value on the Happy Birthday To You portion of the purchase at a reported $5 million. Since that time, Warner/Chappell has been collecting a reported $2 million per year in royalties on the lyrics. That all ended on September 22, 2015, when a California U.S. District Judge George H. King ruled that Warner/Chappell was not the owner of the copyright in the lyrics to the world’s most popular song.

What About the Music?

Songwriters are entitled to three separate copyrights on their songs. They can obtain a copyright in the music, the lyrics, and the performance. Each of these elements of a song are protected against infringement independently. For many pop songs, the performance copyright can be the most valuable, and therefore the most lucrative to license. Conversely, for “standards” like Happy Birthday To You where the song is more important than the singer, the license fee on the music and lyrics is more valuable than the license fee on any particular performance of the work.

Sometime prior to 1893, Mildred Hill and her sister, Patty Hill, wrote a song called “Good Morning.” While the lyrics of Good Morning were different than the lyrics of Happy Birthday To You, the music was the same. In 1893 the two sisters assigned the rights in Good Morning to Clayton Summy. That same year, Mr. Summy published Good Morning in a songbook entitled Song Stories for the Kindergarten and registered the copyright therein. A third Hill sister, Jessica, filed for renewal of the copyright to Song Stories for the Kindergarten in 1921 as Mildred Hill’s heir. Under the Copyright Act of 1909, songs could receive copyright protection for two consecutive 28-year terms. The copyright in the music therefore expired in 1949 and the music entered into the public domain.

The Lyrics

Although the music to Good Morning/Happy Birthday To You entered into the public domain in 1949, the lyrics did not. The lyrics to Happy Birthday To You did not appear in Song Stories for the Kindergarten. Instead, the lyrics to Happy Birthday To You do not appear to have been published until 1911, where they appeared in a book entitled The Elementary Worker and His Work. The lyrics were published several more times, but none of the publications, including The Elementary Worker and His Work credited any of the Hill sisters with authoring the lyrics. In 1934, Jessica Hill sued the producers of a work entitled As Thousands Cheer. During a deposition in that case, Patty Hill asserted that she had written the lyrics to Happy Birthday To You around the the same time she wrote Good Morning with her sister Mildred.

In 1935, Clayton F. Summy Company registered a copyright E51990. While the E51990 registration related it some way to Happy Birthday To You it is unclear exactly what that copyright registration covered. In 1942, the Hill foundation, an entity formed by Jessica and Patty Hill, sued Clayton F. Summy Company for licensing the Hill’s works without authorization of the Hill sisters. In 1944, the Hill sisters and Clayton F. Summy Company settled the lawsuit by entering into an agreement assigning to Clayton F. Summy Company various copyrights, including copyright E51990. Warner/Chappell claims to be a successor in interest to this assignment, but there is some dispute as to whether Warner/Chappell can establish a clear chain of title in the copyright from Clayton F. Summy Company to itself.

The Lawsuit

Musician Rupa Marya and filmmaker Robert Siegel set out to make a documentary about the the song “Happy Birthday To You.” While making the movie, Warner/Chappell, a music publishing division of the much larger Warner Music Group, demanded a license fee of $1,500 to use the song in the documentary. Rather than paying the fee, the pair filed a lawsuit against Warner Chappell Music in 2013. Marya/Siegel argued that Patty Hill was not the author of the lyrics to Happy Birthday To You. They argued that there were several publications of the lyrics prior to her first assertion of authorship more than forty years after her purported authorship. U.S. District Judge George H. King held that as a reasonable fact finder could find either way on this issue, a directed verdict on the issue of authorship was not warranted. There was also an argument that even if Patty Hill was the author of the lyrics, she she lost the copyright in those lyrics through divestive publication before 1935. When an author creates a work he or she is entitled to common law copyright protection. Back in 1935, when a work was published for the first time, it lost state common law protection. If the owner published the work published work in compliance with the requirements of the 1909 Copyright Act however, the owner could obtain federal protection for the published work. Failure to comply with the 1909 Copyright Act would cause the published work to irrevocably enter the public domain. As with the issue of authorship, the judge held that a directed verdict on the issue of divestive publication was not warranted. The judge held similarly on the issue of whether Mildred or Jessica Hill abandoned their rights in the lyrics prior to the publication and registration of E51990. While these issues may resurface if anyone else were to claim copyright in the lyrics to Happy Birthday To You, these issues would require additional findings of fact before any ruling could be made on them.

The Agreements

The final matter decided by the court was the issue of the transfer of the copyright in the lyrics to Happy Birthday To You. Marya/Siegel argued that Warner/Chappell had no evidence that Summy Co. ever obtained the copyright in the lyrics to Happy Birthday To You from the Hill sisters. Marya/Siegel contended that the evidence showed that the E51990 copyright registration was merely for one of several piano arrangements that Jessica Hill authorized Summy Co. to publish and register. Warner/Chappell argued that Summy Co. obtained the copyright in the lyrics to Happy Birthday To You through one or more of three separate agreements.

The First Agreement, allegedly executed in the 1890s was between Mildred and Patty Hill and Mr. Summy and Summy Co. The court held that this First Agreement did not “contemplate the use of the aforementioned songs in sound motion pictures or dramatic performances or in any other wise or manner except in sheet music form.” Warner/Chappell also argued the Second Agreement, allegedly entered into between Jessica Hill and Summy Co. in 1934 and 1935 transferred rights in the Happy Birthday lyrics to Summy Co. The court however, held the Second Agreement was merely for rights in the piano arrangements of the song. Warner/Chappell argued the Third Agreement entered into in 1944 between Jessica Hill and Summy Co. to resolve the Hill-Summy lawsuit included a transfer of the E51990 copyright registration. Unfortunately for Warner/Chappell, the Third Agreement does not include any discussion of the lyrics to Happy Birthday To You or any suggestion that the Hill sisters transferred their common law rights in the lyrics to Happy Birthday To You to Summy Co. The court went on to find that there is no other testimony or circumstantial evidence tending to show that a transfer of the lyrics occurred. The court noted that Warner/Chappell “cannot even point to evidence showing that the Hill sisters transferred their rights in the lyrics to the Hill Foundation, such that the Hill Foundation could, in turn, legitimately transfer them to Summy Co.”

Who Owns the Copyright in the Lyrics to Happy Birthday to You?

Unfortunately, courts can only decide the specific issues presented to them for adjudication. Once the court decided that there was insufficient evidence to prove Warner/Chappell owned the copyright in the lyrics Happy Birthday To You, the court was not able to resolve the unasked question of who actually does own the copyright in those lyrics. For now, the copyright in the lyrics to Happy Birthday To You appears to be an “Orphan Work.” So while it is clear for the time being that Warner/Chappell does not own the copyright, it is unclear who does. Although highly unlikely, it is possible that a potential owner may surface with a chain of title to the work, at which point that owner may have a cause of action for copyright infringement against anyone using the lyrics to Happy Birthday To You. This “problem” with orphan works is well known and results from the entertainment industry’s relentless push to continually extend the length of copyright protection.

Unlike “patents” which last twenty years from their filing date, copyrights can last well over 100 years. Article I, Section 8, Clause 8 of the United States Constitution secures to authors, for a limited time, the exclusive right to their writings. The First Congress enacted the Copyright Act of 1790, granting American authors the right to print, re-print, or publish their work for a period of fourteen years and to renew that term for another fourteen years. Today, for an individual author, copyright protection extends for the life of the author, plus 70 years. For anonymous works and works for hire, the term is 95 years from publication, or 120 years from creation, whichever comes first. Applying this calculation to the lyrics to Happy Birthday To You, there is still a possibilty of someone claiming copyright in the lyrics until the year 2030, which is 95 years after their first publication by the authors.


While it is clear Warner/Chappell can no longer demand royalties for use of the lyrics to Happy Birthday To You, it is less clear that the lyrics are in the public domain. Given the extensive research done by both parties in the Marya, et al. v. Warner/Chappell Music Inc. et al. case above, it seems unlikely another owner will come out of the woodwork any time soon. Without the ability to definitively confirm the passage of the lyrics into the public domain however, any usage of the lyrics must come with the clear warning of caveat emptor.

Brett Trout

Posted in Copyright Law. Tagged with , , , , .

Brett Trout Named Iowa Academy of Trial Lawyers Fellow

Des Moines patent attorney Brett J. Trout has just been named a Fellow of the Iowa Academy of Trial Lawyers. Membership in the Academy is by invitation only, upon sponsorship and recommendation from peers and judges, and unanimous approval by the Board of Governors.

Established in 1962, the Iowa Academy of Trial Lawyers fosters the proficiency and effectiveness of attorneys in the pleading, trial, and general handling of all forms of litigation, and promotes improvements in jurisprudence which will protect the interests and rights of the parties in litigation. Membership in the Academy is limited to 250 attorneys.

Posted in General.

Brett Trout to Speak at The Seventh Annual Creighton Law Review Symposium

The 2015 Seventh Annual Creighton Law Review Symposium addresses the theme of Ethics and Electronics: Navigating Legal Ethics and New Technology. The symposium will be held March 18, 2015, at Creighton University’s School of Law. Brett Trout’s presentation is entitled The Ethical Lawyer and the Tao of Technology and will begin at 8:15a.m. Also presenting at the Symposium will be Cynthia A. Brown, John G. Browning, and Fr. Greg O’Meara. Contact Creighton Law Review for additional information about the Symposium.

Brett Trout

Posted in General.

Inventing to Nowhere

The Frightening Irony
The documentary Inventing to Nowhere boils a series of complex questions down into one: Why are we allowing companies that stifle innovation to dictate our country’s innovation strategy?

The History
The Revolutionary War placed a huge financial burden on the United States. The framers of our Constitution correctly anticipated that the protection of inventors would be critical to the success of our country, so much so, that in Article I, Section 8, Clause 8, of the Constitution they empowered Congress:

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.

For over 200 years this language, and the patent laws resulting therefrom, have promoted innovation in this country, by rewarding and protecting inventors for the invaluable work that they do.

From its very beginning, through the industrial revolution and beyond, the United States has led the world in innovation. The film details how constitutional protections and new strong patent laws put inventors first and fueled innovation. This innovation transformed a country drowning in Revolutionary War debt into world leader, driving the industrial revolution and a global technological transformation.

The unique protections these laws afforded American inventors led to world-changing innovations, including the telegraph, the sewing machine, the light bulb, the electric motor, the cotton gin, the airplane and many others.

The Law
The impetus for the United States’ past global technological leadership stemmed from our forward-thinking approach to protecting inventors. Laws that protect inventors, stimulate inventors to innovate. Conversely, laws that do not protect inventors, discourage inventors from innovating, by allowing moribund companies to steal inventions without having to invest time or money in innovation themselves.

Therefore, the basic premise of our patent system is that in return for disclosing all of the details about your invention, the government will grant you, for a limited period of time, a monopoly on making, using, and selling your invention. This quid pro quo is what motivates inventors to dedicate their lives to create all of the things that make our lives better. Without patents, large companies would wait for inventors to invent, and then simply steal the idea and sell it themselves. This would obviously undermine the motivation to innovate, and would cause at least some inventors to stop inventing.

The very first law in our country, the Constitution, still includes protections for inventors. This one clause has spawned thousands of additional laws and regulations governing how we protect our inventors. Despite being radical in their approach to aggressively protecting inventors, these laws have proven to be quite prescient. The laws include many provisions designed specifically to protect small inventors from larger, less innovative, more powerful, competitors.

One such innovation is the provision that grants inventors not only the damages they can prove a competitor caused by stealing their patented invention, but triple that amount, it they can prove the competitor was willful in its infringement. This “treble damages” provision encourages small inventors to sue larger infringers, while discouraging larger infringers from infringing patents in the first place. These laws have worked well at protecting inventors and encouraging innovation for the past two centuries.

The Ol’ Bait and Switch
Now place yourself in the position of a well-established widget manufacturer in a well-established widget market. Barriers to entry are high, which keeps out competitors and allows you to make higher profits on each widget. The only thing you have to worry about is a smaller competitor inventing a better, smaller, faster, cheaper widget.

What is a lazy company to do? It could invest in innovation itself, but that strategy has at least two drawbacks. First, research and development requires dedication of a lot of time and money toward something that may not even pan out. Second, since innovation involves more than a little luck, there is no guarantee such efforts at innovation will be more successful than those of a smaller upstart. While investing in innovation is great for this country, consumers, and inventors, it may not be so great for lazy companies that thrive on the status quo.

An alternative to investing in innovation, is to stifle innovation by paying lawmakers to make laws that hurt inventors. While this strategy can be very efficient in eliminating competition, it can be a tough sell to consumers, especially since these laws can leave consumers stuck paying more money for less innovative products. And since many consumers are also voters, pitching innovation stifling legislation to lawmakers can also be an uphill battle. To overcome this obvious public relations problem lazy companies needed a villain to justify their call for new innovation stifling laws.

Enter the patent troll. A patent troll is a company that does no innovation on its own. It does not make, use, or sell anything. Its only purpose is to buy patents and sue, or at least threaten to sue, other businesses that actually do make, use, or sell something. Patent trolls rely on the high cost of patent litigation (usually $2 Million dollars per side) and low royalty demands to build their war chest. By steering clear of deep-pocketed infringers, patent trolls churn lucrative profits with little effort.

The key to being a successful Patent Troll is to convince the accused infringer that a lawsuit will be filed. Even if the accused infringer were to fight the lawsuit and win, there is very little likelihood that the accused infringer will ever recoup the huge attorney fees spent in its defense. Since the license fees the patent troll demands are less than the cost of even successfully defending a lawsuit, smaller companies often agree to pay the license fee. The worst part is that the patent troll then uses this payment to buy more patents and pursue more companies.

Patent trolls are a bad thing. They do not create anything and they stifle innovation. The problem is how do you pass a law that differentiates the very large number of legitimate small inventors trying to protect their inventions, from the very small number of patent trolls trying to game the system. The great thing is, at least from a lazy company’s standpoint, you do not have to. Simply convince people how bad patent trolls are, and then convince lawmakers to pass laws that cripple patent trolls. To you, the fact that resulting laws like the “Leahy-Smith America Invents Act,” (AIA) also cripple legitimate small inventors is a feature, not a bug. To a company that sees any innovation as a threat to its continued ability to sell old technology at high prices, crippling everyone with a patent is a great idea.

Long Term Woes
While passing laws like the AIA may stop some patent trolls in the short term, in the long term, its effects on small inventors may be catastrophic. By undermining patents, by encouraging inventors not to file patents, by it making harder for small inventors to get and enforce their patents, and by adding uncertainty to the entire United States patent system, the AIA punishes innovation and rewards the status quo. Lawws like the AIA make would-be small inventors, who see the costs of getting a patent going up, the odds of getting a patent going down, the cost of enforcing a patent going way up, and the enforceability of patents becoming more and more unpredictable, less likely to leave their current jobs and devote their time to innovation.

And even those dedicated inventors still willing to take a chance on themselves will find potential investors more difficult to find. Consider that a patent an investor invests in may have a market valuation of $1,000,000 upon issuance. Now consider that single new patent law can cut that valuation in half, or even bring the valuation all of the way to zero. Investors are therefore less likely to invest in assets that a competitor is capable of decimating with a well-placed campaign contribution to the right lawmaker.

While investors can factor in the increased costs and decreased likelihood of getting a patent, evaluating the increasing uncertainty resulting from laws like the AIA, is difficult. This uncertainty makes investors more likely to bypass small investors all together, in favor of less volatile ventures. While laws like the AIA, that hurt small inventors, may not hurt innovation in the short term, by elimination inventors in the long term, these anti-innovative laws cannot help but to hasten our downfall from our former position as leader in global innovation. Unfortunately, by the time anyone realizes this, it may be too late.

The Answer?
So what is the film’s answer to dealing with patent trolls? The film’s companion website suggests a four-pronged approach. First, improve patent quality. Preventing bad patents from issuing in the first place makes fewer bad patents available for patent trolls to acquire. Since patent trolls do not invent anything themselves, drying up the bad patents dries up the patent trolls. Ways to improve patent quality include: 1) fully funding the United States Patent and Trademark Office (USPTO) by allowing the USPTO to retain all of its user fees; 2) investing in additional human and other resources at the USPTO; and 3) and paying patent examiners based upon the quality, rather than the quantity, of the patents they grant.

Second, enhance certainty in the patent system. In the case of patents certainty is often preferable to perfection. While our patent system is not perfect, if encouraging global innovation is the metric, since as far back as 1790, our system has been working pretty well. Changing our patent laws runs the unnecessary risk not only of unintended consequences, but of also increasing the uncertainty associated with our patent system.

Third, preserve market-based valuations associated with patents. As the uncertainty about the future direction of our patent system increases, the risk associated with the future enforceability of patents also increases, causing the present value of patents to decrease. It is simply not fair to change our country’s 200 year contract with inventors mid-stream. We need to preserve the value of patents promised to inventors that encouraged them to innovate in the first place.

Fourth, we need to focus on legislation that discourages litigation abuse, by both patent owners and accused infringers. By narrowly focusing on the precise problem, we can curtail the problem without punishing innovators. Awarding attorney fees for successfully fighting off patent trolls is a good start with few negative externalities.

It is possible to address the problem of patent trolls without punishing small inventors. The key is not allowing large anti-innovation companies and their associated campaign contributions to dictate the solution, a solution which, while great for patent attorneys, is not only bad for inventors and consumers, but bad for the future of our country.

Brett Trout

Posted in Patent Law.

Who Owns the Copyright on a Photograph Taken by a Monkey?

The Case of the Monkey Photographer
Back in 2011, photographer David Slater found himself in a national park in North Sulawesi, Indonesia, taking pictures of critically endangered crested black macaque monkeys. After taking some pictures of the monkeys, Slater set his camera down, where one of the monkeys picked it up. The monkey then began taking hundreds of pictures. Although most of the pictures were out of focus, a few turned out to be quite impressive, like the selfie you see to your right. The Caters News Agency claimed copyright in the photos, but critics questioned how anyone could claim copyright in photos taken by monkeys.

Copyright Law
As soon as a copyrightable work is fixed in a tangible medium i.e.(written down on paper, filmed, recorded, etc.), the copyright immediately becomes the property of its author. If an individual creates a work outside of any contractual or employment obligation, the individual is the author. If an individual creates a work as part of an employment obligation or as a “work for hire” the employer is the author. An author can assign the copyright in the work to a third party. In such a case, the third party would own the copyright, but the authorship would not change. But since a monkey cannot contract, a monkey cannot be either an employer or an assignor, and there are no laws or legal cases in the United States addressing whether a monkey can be an author of a copyrightable work.

The Controversy
A user posted several of the images taken by the monkeys to Wikimedia Commons, a media file repository for public domain and freely-licensed educational media content. Slater provided Wikimedia with a takedown request for the images, claiming the images were copyrighted. Wikimedia denied the takedown request, taking the position that Slater did not own the copyright in the images.

A Copyright Rules Revision
Last week there was no clear rule as to whether a work created by a non-human animal could be copyrighted. This week there is. Or at least there may be. On Tuesday, the Copyright Office released a draft of its first major revision of its practices in more than twenty years. Buried within the 1,200 pages of administrative practices is a statement that “The Office will not register works produced by nature, animals, or plants. Likewise, the Office cannot register a work purportedly created by divine or supernatural beings, although the Office may register a work where the application or the deposit copy state that the work was inspired by a divine spirit.” This seems to settle the matter, at least for now.

While the new proposed administrative rules seem to settle the matter, there are still several outstanding considerations. First, the proposed rules may be revised before they are adopted. It the adopted rules do not include the prohibition on copyright registration for works produced by animals, we will be back to square one. Second, Congress could act to revise the Copyright Law to allow the registration of animal produced works, which would trump the Copyright Office’s administrative procedures. Third, a court could rule the administrative rules invalid on constitutional or other grounds. Fourth, while the new proposed rules appear to settle the issue in the United States, the issue is still unsettled in most other countries. If some countries decide to allow copyright in animal produced works, while others do not, we could end up with a menagerie of worldwide copyright laws.

Brett Trout

Posted in Copyright Law, Internet Law.

Brett Trout Designated Des Moines Patent Law “Lawyer of the Year”

Five Years Running
For the fifth year in a row, Brett J. Trout has been selected by his peers for inclusion in the annual edition of The Best Lawyers in America®. For 2014, Mr. Trout has been selected for inclusion in the area of Patent Law (Tier 2). The Best Lawyers in America® publication is the oldest peer-reviewed publication in the legal profession. Since 1983, Best Lawyers® continues to be regarded, by both professionals and the public, as the definitive guide to legal excellence in the United States.

Lawyer of the Year
For 2014, The Best Lawyers in America® has also designated Brett J. Trout Lawyer of the Year. Only one lawyer in each practice area and geographic area is honored as the “Lawyer of the Year.” The “Lawyer of the Year” designation reflects the abilities, professionalism, and integrity of the lawyer as judged by their peers. Each “Lawyer of the Year” is selected based upon exhaustive peer-review assessments conducted with thousands of leading lawyers each year.

The Best Lawyers in America
The 2014 Best Lawyers in America® publication covers the largest and most targeted audience of any legal profession peer-review listing. Excerpts from the Best Lawyers® publication appear in The Washington Post, The Los Angeles Times, New York Magazine, and more than dozens of other regional publications, reaching more than 18 million readers. Best Lawyers selection process is based upon exhaustive and rigorous peer-review surveys. Over four million confidential evaluations by leading legal professionals are considered in the process. The American Lawyer and Corporate Counsel magazine describes The Best Lawyers in America® as “the most respected referral list of attorneys in practice.”

“The fact that a lawyer has been voted by his or her peers into Best Lawyers in a legal practice area does not signify that the lawyer has been certified by a state board of legal specialization in that practice area or specialty. A listing in Best Lawyers does not guarantee a desired legal result.” – Best Lawyers

Posted in Patent Law. Tagged with , .

The Right of Publicity

Hey, That’s Me!
You spend months working on your cosplay outfit, and it turns out perfect. You are the hit of the con, with everyone taking your picture. Then, all of a sudden, you see you and your outfit on all kinds of merchandise, ranging from coffee mugs to posters. Is that legal? What can you do?

The Right of Publicity
Unlike constitutionally protected rights, like the freedom of speech, the right of publicity is a hodge-podge of state and common laws. To be sure what is and what is not allowed under the right of publicity, it is important to check the laws of the state in which the use is occurring. Even though these laws differ from state to state, some general guidelines do emerge. The following is an amalgamation of various state laws:

Background on The Right of Publicity
The right of publicity is what prevents a company from using a photograph of someone in its advertisements without obtaining proper consent. The relatively new right of publicity has developed over the past one hundred years from the much older right of privacy. Not long after its initial recognition, the right of publicity developed into a separate interest, quite different from the old English common-law right of privacy. The right of publicity protects the commercial interest in one’s persona, name, and likeness and, in some jurisdictions, one’s nickname, voice, mannerisms, characterizations, and performing style. In 1903, the State of New York enacted a statute providing criminal and civil penalties for unauthorized use of the name, portrait, or picture of any living person for advertising or purposes of trade. The right was not identified as the right of publicity, however, until 1953 in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.

Twenty-eight states have some form of protection for the right of publicity. Eighteen states have actual statutes protecting this right. The remaining ten states rely on common law, which is often broader and more comprehensive than most right of publicity statutes. Throughout the country, the duration of the right of publicity varies widely from state to state. The duration can be as short as the life of the individual or as long as commercial exploitation of the persona continues.

Types of Protection
Curiously, although the right of publicity began by extending the right of privacy to cover unauthorized use of a persona in advertising, the right now relates primarily to celebrities interested in promoting the “right” kind of publicity. Right of publicity laws have developed in conjunction with this country’s development of “celebrities” themselves, changing to accommodate the interests of these particular individuals. The key to any cause of action for right of publicity is whether the usage is identifiable by the public with the particular individual. Use of a celebrity’s voice, dance moves, or even fighting style may violate a celebrity’s right of publicity if the public identifies the appropriated usage with the celebrity.

It is not necessary to be a celebrity to assert the right of publicity. However, given the lower desirability of misappropriating a non-celebrity likeness, the higher likelihood of a non-celebrity noticing or even caring about the usage and the lower damages involved, non-celebrity misappropriations of likeness, while being no less violations of the right of publicity, often fly under the radar. Throughout the country, even if the unauthorized usage of a persona is not actionable under the right of publicity laws, these other causes of action may be available:

Implied endorsement
Trademark Laws
State Dilution Laws
Copyright Laws

The primary defense to a claim of right of publicity is that the usage was non-commercial. The idea of financial vacuity, or that the party using the image is not making money from the image, etc., is particularly important on the Internet where most individuals setting up “fan” sites obtain no pecuniary benefit. To avoid liability, a defendant can also claim that the usage was for critical commentary or that the material was used in association with news reporting. To reduce or avoid liability, a defendant can claim that the usage was merely media promoting itself (use in advertising of actual front-page tabloid bearing plaintiff’s likeness), social commentary, or a parody of the individual. A blog post about a celebrity’s recent drunken escapades would likely be able to use the celebrity’s image in association with the post under a claim that the newsworthiness of the story and the use of the blog as a media outlet overrides the celebrity’s right of publicity.

The most common relief sought in a cause of action for right of publicity is injunctive relief. In addition, a plaintiff may collect the estimated value of an appropriate licensing agreement for the alleged usage, damages for deceptive marketing, and injury to emotion or reputation.

Unlike trademarks, the right of publicity can be licensed or assigned “in gross” without the necessity of transferring business goodwill. Because goodwill is not a necessary component of assigning publicity, the right of publicity is also very different from the right of privacy, which cannot be assigned at all. When licensing or assigning a right of publicity, the grantor should reserve all rights not otherwise granted. Conversely, the recipient should attempt to obtain a future technologies clause. Such a clause would include authorization to use the likeness by any means, methods, and technologies now known or which become known.

The Right of Publicity Online
In the past, right of publicity cases have typically centered on using a person’s exact name or actual photograph. With the advent of sophisticated software, however, the image of an individual can be modified across a continuum from an easily recognizable form to one identifiable as a completely separate individual. Accordingly, it is difficult to determine at what point along the continuum usage would not constitute a violation of the individual’s right of publicity.

In Pesina v. Midway Mfg. Co., the plaintiff was used as a model for a video game character. The video game manufacturer then used the video game character in a subsequent video game without plaintiff’s permission. The case involved a martial arts game in which the plaintiff’s moves were computerized and associated with a video game character. The court dismissed the plaintiff on summary judgment. The court stated that there was no violation of plaintiff’s right of publicity, because plaintiff could not show his identity had become inextricably intertwined in the public mind with the video game character.

Michaels v. Internet Entertainment Group, Inc., involved a private videotape made by Pamela Anderson Lee and her then boyfriend, Bret Michaels. The rather blue videotape fell into the hands of the defendant, and the defendant intended to disseminate the videotape on the Internet. The court granted an injunction against the defendant’s distribution of the material, finding a likelihood of success on the merits. Courts will typically prevent any such unmitigated commercial distribution of a celebrity’s likeness outside of a news format.

Michaels v. Internet Entertainment Group, Inc., involved the same videotape. This case, however, also involved a tabloid television show as the defendant. The court balanced the plaintiff’s right of publicity against the television show’s First Amendment rights and rights under California Civil Code Section 3344(d). The court held that as the love lives of stars were indeed newsworthy and that the news organization’s right to air the material outweighed the plaintiff’s right of publicity. The court denied the injunction against the television show. The difference between this case and the last is the great deference courts show news organizations under the First Amendment. The court’s protection of news sources is an important consideration to take into account when deciding how a court might come out on a right of publicity issue, which may, at some point, involve your company.

In Astaire v. Best Film & Video Corp., the court held that inclusion of Fred Astaire‘s likeness on video tapes for Fred Astaire Dance Studios was not a violation of the plaintiff’s right of publicity in the deceased. Under California Civil Code Section 990(n), unauthorized use of a deceased personality’s name, voice, signature, photograph, or likeness is exempted from liability if such use is in a play, book, magazine, newspaper, musical composition, film, radio, or television program. The court held that the statute should obviously be extended to include videotapes, such as those distributed by the defendant.

Several actresses, including Carmen Electra, Alyssa Milano, Ami Dolenz, and Patricia Kotero (Apollonia), have pursued claims against various Internet hosts of pornographic sites displaying images of the actresses’ likenesses. At least one of these suits has resulted in a $238,000 judgment against a website owner. Several of the suits have settled under confidential terms. The right of publicity involves not only the questions of degree, commercial use, and newsworthiness, but the potential damage to the rightholder as well.

Due to the sheer size of the Internet, monitoring the Internet for right of publicity violations is difficult if not impossible. Monitoring is especially difficult if the violator is intent on limiting access to the material or disguising the material to avoid detection. An additional obstacle is that a SYSOP may not be liable for third party postings of which the SYSOP was not aware. Using the analogy to defamation, it is unlikely that SYSOPs would be liable for postings by other users. Therefore, SYSOPs have little incentive to police their users’ postings that may include a violation of publicity.

An additional problem is that many of the Internet postings of personas come about when individuals post them on their non-commercial sites. In these situations, the right of publicity would not be useful in attempting to enjoin such activity. A commercial or defamatory component must be proven to engender legal action.

One last problem is the absence of any uniform law governing the right of publicity. Because the Internet is accessible in every state, plaintiffs likely will be forum shopping into states granting the broadest protection. Clearly, uniform laws are needed to clarify the issues and address these special concerns unique to Cyberspace.

A Single Keystroke
Never before has such widespread dissemination of information been so simple and so inexpensive. Prior to the Internet, such dissemination could only be supported by a large commercial enterprise. The Internet has now made large-scale, non-commercial dissemination feasible. Although the right of publicity may be expanded in the future to restrict the non-commercial sharing of an individual’s likeness and persona, it is much more likely that celebrities will have to continue suffering the boundless royalty-free proliferation of their persona at the hands of their adoring, and not-so-adoring, fans.

A single keystroke can lead to a right of publicity and/or defamation lawsuit costing your company hundreds of thousands of dollars in lost time and money. Every company should consider putting preventative policies down in writing. Distributing these written policies to your employees will not only reduce the likelihood of your company ever being hauled into court for defamation or right of publicity violations, but may also reduce your liability and damages in the event such an unfortunate event actually occurs.

HT: Derek Mahr
Brett Trout

Posted in Internet Law, Iowa Law, social media, Trademark Law. Tagged with .

What is the Difference Between ™, ®, and ©?

You see these symbols every day, but what do they mean? Here is a handy guide to help you understand the difference between ™, ®, and ©.

™ stand for “trademark.” When you see a ™ next to a word, it means that whoever put the ™ there is claiming they own the exclusive right to use that word in association with the good or service they are offering. They are claiming that word as their trademark. A trademark can be a word, logo, etc. that shows a good or service came from a particular source. You only obtain trademark rights by offering a good or service in commerce under the trademark. Once you offer a good or service in commerce under the trademark, you have common law trademark rights that extend to the boundaries of your sales market.

Apple is a trademark. Any computer related items with the Apple name or Apple logo either come from Apple, or from someone paying Apple a license fee to use the Apple trademark. But the Apple trademark only applies to specific goods and services. Apple cannot prevent you from using the word “apple” to sell apples. As applied to apples, “apple” is a generic term and, therefore, not protectable as a trademark on apples.

Using the ™ does not require any kind of registration. Therefore, you will sometimes see ™ used on words the “owner” would never be able to prove are actual trademarks. Usually ™ means the owner is unable, for cost or legal reasons, to register the trademark. But it could instead mean the owner is merely using the ™ until their federal trademark registration issues.

The use of ® indicates that the trademark is registered with the United States Patent and Trademark Office (USPTO). It means that the USPTO has examined the trademark, and determined that the trademark is valid and unlikely to cause confusion with other trademarks. For any trademark with a ®, you should be able to go to, search the trademark, and see what goods and/or services the trademark covers. The real advantage of the registration is that it automatically covers the entire United States, and provides for attorney fees and triple damages if an infringer willfully infringes the registered trademark.

Apple is an example of a trademark that is also a registered trademark. If your trademark is valuable and protectable, you want to register it with the USPTO, and use the ® to warn potential infringers to stay away. The ® serves as a warning to others that you have the resources to register your trademark, and will likely sue them for triple damages and attorney fees if they willfully infringe your registered trademark.

Use of the © indicates that the user is claiming copyright in the material to which the © is applied. You usually see the © along with the year of first publication, and the name of the copyright proprietor i.e.(© 2013 Brett J. Trout). Copyright protects original works of authorship, like books, plays, software, sculpture, etc. But copyright only protects the artistic elements of those works, not the functional elements. If you come up with a new invention that holds your eyeglasses and is shaped like a fish, copyright only protects the shaped like a fish aspect. You would need a patent to protect the functional nature of your new eyeglass stand.

As soon as you write something original down, or store it on a computer, or record it on video, you have a copyright in the artistic, or “aesthetic,” aspect of that work. Unlike trademarks, you do not have to offer something for sale to own a copyright on it. You do not have to register your copyright to own the copyright or use the ©. If you are a U.S. citizen however, you do have to register your copyright with the U.S. Copyright Office, if you ever want to sue anyone for infringing your copyright. Odds are, you hold the copyright to thousands of works, and did not even know it.

Brett Trout

Posted in Copyright Law, Trademark Law.

Frequently Asked Questions About Patents

What is a patent?

A patent is a legal document. It defines the scope of your invention. A patent allows you to prevent others from making, using or selling your invention without paying you. You can see what a patent looks like here.

Is everything patentable?

No. You cannot get a patent on ideas, obvious combinations of pre-existing devices, illegal or immoral matter, pure research, or anything that is simply a novelty or curiosity. You can get a patent on new and useful processes, machines, manufactures, or compositions of matter, as well as any new and useful improvement thereof.

Are all patents valuable?

Just like the inventions they protect, some patents are valuable, and some are not. A patent is like a safe, in which you keep your valuables. There are good safes and bad safes. A patent does not make an invention better. A patent does not even mean that an invention has any value at all. A patent merely increases the value of a valuable invention, by giving you a monopoly on sales of the invention, allowing you to charge a higher price. If the invention does not sell, a patent is not going to help.

Should I get a patent on my invention?

The real question is will the invention sell. If it will, a patent can be very valuable. By keeping others out of the market, you can use a patent to make large profits on the sale of your invention, or negotiate with a third party to pay you royalties on every sale. If the invention is novel and lots of people are willing to pay a premium over the manufacturing costs to get it, you probably need a patent.

How long does a patent last?

While patents formerly remained in force for 17 years from the date of their issuance, patents now expire 20 years from the date of their filing. Bear in mind that a patent does not allow you to actually make your invention, only to prevent others from making, using, or selling your invention.

What is in a patent?

Examples of patents can be found at the Patent Office website. You can search for other patents at Google Patents. Patents typically include a brief description of the background and pre-existing technology, a detailed description of the invention, drawings and/or flowcharts associated with the invention, an abstract of the invention, and one or more claims. The claims are each a one-sentence description of the invention taht, preferably, are broad enough to differentiate the invention over any pre-existing devices or obvious combinations thereof. The claims must be narrow enough so as not to include any extraneous matter, which would serve as a limitation to the enforceable scope of the patent.

Are all patents created equal?

No. In fact, if you hired 50 patent attorneys to write a patent covering your invention, no two would be the same. Some would be good, and some would be bad. The value of a patent is often closely correlated with the skill and knowledge of the patent attorney drafting it. Drafting a narrow patent is easy and relatively inexpensive. Maximizing the protection available in a patent is a skill which, not surprisingly, translates into more time and more money to get the patent issued. The novelty of the invention also plays a hand in the breadth of the patent. It is not difficult to gain broad patent protection on a truly pioneering invention. By the same token, it is hard to gain more than minimal patent protection on an incremental improvement over the way things were done before.

Will the Patent Office grant me a patent on an invention they know infringes someone else’s patent?

Possibly. As noted above, a patent does not give you the right to DO anything, only the right to prevent others from doing something. The Patent Office does not care if your invention infringes an existing patent, as long as your invention is an improvement over the other invention. Why would you want a patent on an invention that infringes someone else’s patent? Well, if an inventor were to invent a chair and receive a patent thereon, a subsequent inventor could file and obtain a patent on a chair with arms. Neither the first patent owner nor the second patent owner could make the chair with arms without infringing the other’s patent. However, the parties could negotiate a cross-license where both parties pay each other a royalty in exchange for being allowed to manufacture the improved device.

Can I get money if someone is infringing my patent?

Yes, but you may have to prove infringement in court. Available remedies include an injunction (getting them to stop infringing), as well as the patent holder’s damages. Treble damages and attorney fees (which may be $1 Million or more) are also available in the case of willful infringers.

Where do I start if I want to patent my idea?

You may wish to start searching Google Patents to check if there is already a patent on your idea. Although it is difficult to determine definitively from the Google Patent database if your idea is already patented, you may get lucky, or unlucky as the case may be, and stumble upon your idea in another patent. If the Google Patent search turns up nothing, you can have a patent attorney do a search for you. While patent attorney searches are much more comprehensive, they are still not guaranteed. Even a search by a patent attorney is likely to miss relevant patents, and most patent applications are not searchable immediately after filing. If the patent search doe not turn up anything similar, you may wish to have the patent attorney prepare and file a patent application on your behalf. Although the process is long and costly, if the invention is a winner, a patent can mean the difference between millions in profits and having the invention stolen out from under you.

Brett Trout

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Posted in General, Patent Law.

Brett Trout Selected For Inclusion in The Best Lawyers in America® 2013

For the fourth year in a row, Brett J. Trout has been selected by his peers for inclusion in the annual edition of The Best Lawyers in America®. For 2013, Mr. Trout has been selected for inclusion in the specialties of both Information Technology Law and Patent Law. The Best Lawyers in America® publication is the oldest peer-reviewed publication in the legal profession. Since 1983, Best Lawyers® continues to be regarded, by both professionals and the public, as the definitive guide to legal excellence in the United States.

The 2013 Best Lawyers in America® publication covers the largest and most targeted audience of any legal profession peer-review listing. Excerpts from the Best Lawyers® publication appear in The Washington Post, The Los Angeles Times, New York Magazine, and more than dozens of other regional publications, reaching more than 18 million readers.

Best Lawyers selection process is based upon exhaustive and rigorous peer-review surveys. Over four million confidential evaluations by leading legal professionals are considered in the process. The American Lawyer and Corporate Counsel magazine describes The Best Lawyers in America® as “the most respected referral list of attorneys in practice.”

Posted in General.