Protect your creativity
Avoid legal red tape: Do your homework; register your copyright; read the fine print
By Jessica Willis, Special to The Eagle
Thursday, March 09
You're a genius. Your vision is going to inspire the world. You just need a money-wielding big shot to discover how great you are. One fine day, the big shot finds you. The fine print on the contract is voluminous and you, being a trusting, hungry soul, don't bother to read it. Protecting and policing your creative output is the last thing on your mind. You scrawl your name on the dotted line, sending money, freedom and patrons your way. Or so you think.
Congratulations. You've just signed away all your rights.
The artist as prey for the smooth-talking beasts of the corporate jungle is a fable told countless times, because it happens to be a true cautionary tale. If ever a creator (or a creation) had a champion and protector, it would be patent attorney Malcolm J. Chisholm of Lee, who, as a specialist in patent, trademark and copyright law, knows that creative types are victims of intellectual property theft all the time. He has represented everything from fuel cell patents to the estate of celebrated blues guitarist Robert Johnson. He knows how easy it is to dupe inventors of all kinds.
"Clients keep coming in with the same kinds of problems," Chisholm says. "And they almost always come in too late. The resolution of so many of these problems would have been straightforward if they had been (to my office) before engaging in a prior relationship with another business entity."
Chisholm will never forget a contract that one of his first clients brought him when he opened his private practice in Lee in 1992. He still uses the contract as an example of what not to sign. A shop in Albany offered his client, a talented local painter, some wall space. "They told her she was great, sign this standard contract, you'll get a percentage, and three pages down in the very, very fine print, it said that the shop had the right of first refusal of anything she did thereafter, and if it refused to use it, she couldn't use it either!" Chisholm exclaimed, still stunned by the audacity of it all.
"I told her that this contract said that she was a de facto employee with no benefits, forever. Anything she did could be put on the shelf. What would most likely happen is that they'd tell her she was no longer popular, good-bye, and if she became famous later on, they'd have a hook in her. I'll never forget that contract. Completely outrageous."
Was she too late in seeking Chisholm's counsel? He shakes his head vehemently. "No, no, that's the good news." But, as Chisholm knows, there are countless others who become hopelessly snarled in legal red tape because of their eagerness to make some money and reach a bigger audience. In addition to honing their craft, an artist must also cultivate a jaundiced eye for the fine print and the subtleties of intellectual property rights. It can get a little dense. "It's a jungle out there," he adds. "It really is."
In response to these oft-seen (and preventable) problems, Chisholm is working on a book that will teach artists the basics of copyright, trademark and patent law. "I have to tell this to my clients all the time," he says. "In America, freedom means that copying is mere flattery. Unless you have a property right." And then, of course, that so-called flattery is cause for litigation.
"Property rights come into existence automatically, whenever you fix your creative expression in a tangible form," Chisholm explains. "I have a melody in my mind. I'm thinking about it. I don't own it yet. Once it's fixed, written down and able to be reproduced, it's sufficiently solid and then copyright laws come into existence."
However, in order to make these rights truly meaningful, Chisholm strongly suggests registering the work with the U.S. Copyright Office. If that sounds like a costly and complicated endeavor, Chisholm maintains that the registration application is "designed for artists, not for lawyers" and the normal filing fee is $30. The application is available at www.copyright.gov.
"The point is to recognize the value in (registering). It's really, really important. Ninety percent of the disputes I see would have been resolved immediately if the work had been registered beforehand. If you don't have a registration and someone infringes on your property right, you must register on an expedited basis, and you're talking a minimum of $1,500, plus lawyer's fees."
In addition, those with works already protected by the U.S. Copyright office who prevail in court (most do) will have their lawyer's fees paid, and be eligible for up to $300,000 in restitution per damaging act. "That's huge, if you don't have a lot of dough."
Those who didn't do their homework, on the other hand, aren't as handsomely repaid. "If you get a registration thereafter, you're limited to an injunction to stop the conduct, and actual damages, which is what they've gained and you lost. That may help you, but you may have already lost the marketplace."
There can also be a lot of confusion when an artist hires a subcontractor, whether it's an illustrator for an author's children's book or an ISP that offers to upload an artist's work. "In many cases the subcontractor has a strong claim to be a joint owner," Chisholm warns. "When you hire a subcontractor, have them sign a written agreement beforehand so there's no potential for a problem. I have an unambiguous two-page agreement that I pass out like potato chips to my clients. It says 'I will use your services, you will own the money I give you, I will own the copyright.'"
An ounce of prevention is also valuable in the realm of trademark law, and Chisholm believes that the advent of the Internet has put trademark protection into the hands of what Chisholm refers to as the "cyber cops."
"You must police your rights," he says. "Because you might lose them. The law is if you have a trademark and someone is using it, then you may lose your trademark rights. Before the Internet, the official gazette of the U.S. Trademark and Patent office would publish trademarks that were about to come out, and you had 30 days to oppose. Then comes the Internet search engines and a whole global industry of policing trademark policing is born."
Now, a company on the other side of the world can discover, in a few keystrokes, if another business is inadvertently infringing on its trademark rights. "Let's keep the attorneys working," Chisholm says ruefully.
Again, the only method of protection, Chisholm maintains, is to "do some searching. If you're committed to a trademark, see if someone else owns it, and if they do, either transition out, or do your utmost to avoid a conflict by not using it on the Internet. The best solution is to do your homework."
The Trademark Electronic Search System at the U.S. Patent and Trademark office Web site (www.uspto.gov) is a valuable tool. In order for a trademark to be registered at the Federal level, legal counsel is required.
Another part of doing one's homework is learning how to distinguish between the three types of trademarks.
"Arbitrary marks have no inherent meaning to the goods and services," Chisholm says. Examples of these would be McDonald's, Ford, Pentium. Of the 10,000 trademarks the average commuter sees every day, says Chisholm, 95 percent of these are arbitrary ones.
Suggestive marks, on the other hand, "would be something like Burger King or No-Doz. They give a clue as to what the product or service does. Ninety-nine percent of my clients come in with suggestive trademark ideas. They worked hard on them. Suggestive trademarks have usually been bought already. Don't put marketing dollars into an infringement suit," Chisholm advises. "Don't go there."
The riskiest type of mark are the merely descriptive ones. Chisholm uses Friendly's as an example. "It's very hard to get rights to these kinds of names. You cannot own words that the competition needs to compete with you."
Chisholm maintains that arbitrary marks tend to be the best choices for trademark selection." If you go to the Lee shops you'll see that all of the best trademarks are arbitrary. They follow one rule. They must be memorable and unoffensive. We're surrounded by these arbitrary marks. Google, Amazon. Who would've thought? But they work. The value is in the product. There's no magic to selecting a trademark."
Still, a little poetry can't hurt: "There's a lot of room for creativity in selecting a fanciful, memorable and inoffensive couplet. We see them all the time," he says. "A word out of nowhere with a brand new meaning."
Sometimes the inspiration for these sacred source indicators also comes out of nowhere. On a camping trip with his Boy Scout troop, Chisholm was listening to the beautiful sound of the wind in the trees. "I thought, 'let's get some trademarks based on the world of trees and wind.' Wind Elm. Elm Wind. Birch Song. I made a whole list of maybe 15 tree and wind couplets. I did a search on them and they were all available," he says. "Clients are like, 'I gotta have Berkshire!' I say, try 'Soft Hills'. It's wide open."
REPRINTED WITH PERMISSION FROM THE BERKSHIRE EAGLE, Pittsfield, MA
