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September Legal Column |
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INTELLECTUAL PROPERTY PROTECTION - QUESTIONS AND ANSWERS |
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By Joel I. Rosenblatt, Attorney at Law Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@mindspring.com LESSONS LEARNED - To Trust Or Not To Trust If you think, I mean, by the above, mistakes can be prevented by placing trust in trustworthy people, then I suggest you ask the reverse question by first finding a trustworthy person in whom trust may be placed. Better yet may be to trust no one and regard everyone as ready, willing and able to take everything you have and then justify it by demonstrating you had no right to it (whatever it is or was), in the first place or you are better off with it (whatever it is or was), out of your hands and in the possession of someone more worthy (whomever that could be). To skip to the basics, and without a plug for the “stitch in time,” to prevent the need for the proverbial “nine,” whatever may be done in the formation of a legal relationship with any other person, think about what each person is warranting or, to put it in simple terms, says he or she is bringing as the value added, to the relationship and then think of all of the rights and obligations within the relationship, and then describe it in a written instrument to be signed by all parties. An example of what happens when that advice is not heeded is described in a question submitted by a video game developer who made a deal with a video artist to add some “minor” artistic details to “embellish” her game. Now the artist is claiming not only co-ownership but has proceeded to licensed the game and is even collecting royalties. It all sounds evil and the game developer wants to know how it can happen and what can be done about it. She wants to cancel the license made by the artist and recoup all of the money paid to the artist. Then she wants to be able to license the game on her own without acknowledging the artist or paying him any part of any royalties. What, she wants to know, can she do? The Answer To the Game Developer’s Dilemma I’m sorry to say there is no answer, at least not now. However, there was once an answer which could have served as the “one stitch in time,” while preventing the “nine” others, provided the problem was even reparable at that time. There is a lesson in this so let us start at the beginning. First the facts. Our game developer created a video game by using some concepts available in the public domain and some others which were not in the public domain but were the copyrighted creations of other authors (we won’t go down that road today), and modified the mix by adding her own original works of authorship to make a new creative work possessing sufficient indicia of originality to merit protection under the Copyright Act as an original work or authorship. Before we go on, make a mental note that while only parts of the video game are her creations, and she is not entitled to claim any copyrights in the public domain works or the copyright works of others, which she took and put in her game, she is entitled to claim each of the original works she created and put in the game as well as the original and creative work produced by the overall interrelated combination of her separate creative works and the other works taken from the public domain and from the copyrighted works of other people, provided the overall combination is creative and original and amounts to a work of authorship deserving copyright protection. To make the point, it is the originality in the whole combination that is examined to determine if our game developer is entitled to claim copyright in the game and that claim may only be made to that original combination. It’s very simple, when one starts with the essentials which are the separate public domain and copyrighted elements included in the final video game. So with the game developer’s legal rights so clear, where did she go wrong. I’m sure you already have the answer, which is allowing someone to modify her game on trust and before getting it all down on paper describing what each party brings, what additions or changes are being made, the payments if any and most important, how the rights to any work of authorship in the modifications are to be divided between the game developer and the artist. While our game developer thought the deal was only for the artist to do some minor embellishments to her video game in exchange for future payments, if any, from licensing revenues, which only she would be authorized to arrange as the game owner, our artist had another idea. Going into the deal without a written agreement, the artist knew he was entitled to claim the copyright to the artistic embellishments he made to the video game. Then when our game developer combined the artist’s embellishments with her game, merging the two separate parts in an interelated whole, our artist knew he had the game developer right where he wanted her, as a co-owner with the artist of the whole combined game including the original game created by the developer and his artistic embellishments. Unfortunately for our game developer, when she combined her game with the artist’s original work, she created a joint work, and she and the artist then each was authorized to deal with the joint work as if each was the sole owner, subject only to an accounting to the other for any profits. Armed with this knowledge, the artist went forth and filed a copyright application, identifying the game developer and the artist as the joint authors of the new work which combined the separate copyrighted game of the developer and the separate copyrighted embellishments created by the artist. To finish his questionable handiwork, the artist rejected any claim by the game developer that his embellishments were a “work for hire,” or a “derivative work,” which then would only be registerable for copyright as a modification by the game developer based on the game developer’s preexisting game. Hoever, artist stuck to his story that the agreement was for the artist to embellish the game with his original artistic creations which then were to be merged into the video game as separate parts combined in an interelated whole, and forming a new copyrighted work of joint authorship jointly owned by developer and artist. Of course as there was no written agreement, there was no way to dispute the artist’s version. What made the result particularly galling to developer was the artist’s contribution was barely artistic and represented only about five percent of the joint work. Even with that the artist’s claim was unassailable and now the question may be asked, how could our innocent game developer have protected herself from the evil artist? Well to begin with, our game developer is not so innocent. She deliberately avoided “talking business” with the artist because she wanted to have his work without the commitment to pay him for his work, while at the same time, avoiding the difficult discussions over “rights,” because she had the mistaken idea that by embellishing her game, the artist was doing nothing more than creating a “derivative work” in which she owned all of the rights. However, it doesn’t work that way. Even though a derivative work is a modification of a basic work, the author of the changed or added part can claim a copyright only to his or her work. Because of the separate copyright interest in the derivative work, in this case the work of the artist, the copyright owner of the basic work, in this case the game developer, cannot use the changes or additions without permission and the copyright owner of the changes and additions cannot use the basic work on which his modifications depend, without the permission of the owner of the basic work, unless fair use is claimed. So, as a lesson learned, we now know to put our trust in a written agreement which clearly expresses what each party brings to the agreement and the rights and obligations of the parties, being careful to avoid omitting any element material to the agreement. In the case of a copyrighted work or the creation of a copyright work, whether a single, joint, derivative or compilation, terms which must at least be included when preparing the agreement are the description of the work, the respective author’s contributions, the ownership of the work and whether any of the separate author’s contributions are made as a “work for hire,” or as a contribution to a joint work or as a derivative work, the respective author’s separate or collective rights in each of the separate copyright rights of copying, modifying, transferring, performing, using or displaying the work, whether the work is assigned to any other party or if licensed, the limits and restriction to the license, any warranties made for the respective author’s separate works and most important, the arrangements for sharing of any revenues, profits or proceeds, derived from the work. While a handshake may often work well for parties who respect each other, as the song says, “an agreement is a girl’s best friend.” |
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Biography |
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims. Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround. Education and Professional Affiliations: Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School. Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@mindspring.com . |
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