Public Domain Advice, Tips And Tricks

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Public Domain First Aid Kit

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This report is presented for information and research purposes only and was designed to provide accurate and authoritative information with regard to the subject matter covered. It is sold with the understanding that the publisher and author are not engaged in rendering legal, accounting, or other professional advice. The material contained within also does not in any way constitute professional advice and should not be perceived as such.

If legal advice or other professional assistance is required, the services of a competent professional should be sought. The reader is also advised to consult with an appropriately qualified professional before making any business decisions related to the information contained herein.

The author, Tony Laidig, does not accept any responsibility for any liabilities resulting from business decisions made by purchasers or users of this report. We make no claim that you will earn any income using this report whatsoever.

Income results can vary based upon the reader’s personal business practices, hard work and other benefits or strategies. You must assume the risk that you will not earn any income from this product or its use.

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Exceptions to Copyright in Public Domain Resources Copyrighted Elements in Public Domain Resources There are instances where certain elements of a resource may be in the Public Domain, but other elements are not. This type of scenario is mostly prevalent with recorded media, such as film, video or audio recordings. An example of this would be the television program, The Beverly Hillbillies. Some of the show’s episodes are now in the public domain; however, the theme music is protected by copyright. One approach that some businesses have used in this situation is to remove the protected music and provide different, royalty-free music in its place. The most important point here is to do your research homework! More complete explanations of this type of copyright scenario can be found at Copyright.gov.

Privacy and Publicity Rights “Privacy and publicity rights reflect separate and distinct interests from copyright interests. Patrons desiring to use materials from this website bear the responsibility of making individualized determinations as to whether privacy and publicity rights are implicated by the nature of the materials and how they may wish to use such materials.

“While copyright protects the copyright holder's property rights in the work or intellectual creation, privacy and publicity rights protect the interests of the person(s) who may be the subject(s) of the work or intellectual creation. Issues pertaining to privacy and publicity may arise when a researcher contemplates the use of letters, diary entries, photographs or reportage in visual, audio, and print formats found in library collections. Because two or more people are often

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involved in the work (e.g., photographer and subject, interviewer and interviewee) and because of the ease with which various media in digital format can be reused, photographs, audio files, and motion pictures represent materials in which issues of privacy and publicity emerge with some frequency. “The distinctions among privacy rights, publicity rights, and copyright are best illustrated by example, as follows: An advertiser wishes to use a photograph for a print advertisement. The advertiser approaches the photographer, who holds the copyright in the photograph, and negotiates a license to use the photograph. The advertiser also is required to determine the relationship between the photographer and the subject of the photograph. If no formal relationship (e.g., a release form signed by the subject) exists that permits the photographer to license the use of the photograph for all uses or otherwise waives the subject's, sitter's or model's rights, then the advertiser must seek permission from the subject of the photograph because the subject has retained both privacy and publicity rights in the use of their likeness. The privacy right or interest of the subject is personal in character, that the subject and his/her likeness not be cast before the public eye without his/her consent, the right to be left alone. The publicity right of the subject is that their image may not be commercially exploited without his/her consent and potentially compensation. “While copyright is a federally protected right under the United States Copyright Act, with statutorily described fair use defenses against charges of copyright infringement, neither privacy nor publicity rights are the subject of federal law.

Note also that while fair use is a defense to copyright infringement, fair use is not a defense to claims of violation of privacy or publicity rights. Privacy and publicity rights are the subject of state laws. While many states have privacy and/or publicity laws, others do not recognize such rights or recognize such rights under other state laws or common law legal theories such as misappropriation and false representation. What may be permitted in one state may not be permitted in another. Note also that related causes of action may be pursued under the

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federal Lanham Act, 15 U.S.C. § 1125 (a), for example, for unauthorized uses of a person's identity in order to create a false endorsement. “While an individual's right to privacy generally ends when the individual dies, publicity rights associated with the commercial value connected with an individual's name, image or voice may continue. For example, many estates or representatives of famous authors, musicians, actors, photographers, politicians, sports figures, celebrities, and other public figures continue to control and license the uses of those figures' names, likenesses, etc.�* An example of this would be where you have located a Public Domain resource that contains a photograph of Elvis. Because of Publicity Rights held by his estate, you cannot use any likeness of Elvis for commercial gain, even if it is in the Public Domain. *(Library of Congress website; http://memory.loc.gov/ammem/copothr.html, accessed 1/26/06)

Trademarks A trademark is a word, device, symbol, name, or combination of any of these elements intended or used in business to distinguish and identify the products of one company or seller from products sold or manufactured by others, and indicate sources of the products. To make it simple, a brand name defines a trademark.

Registration of a trademark is not required by the government. However, several advantages can be given if a trademark obtained federal registration. It includes evidences of trademark's ownership, nationwide constructive notice about the owner's claim, federal courts jurisdiction can be invoked, registration can be a basis to obtain international trademark registration, and registration can be filed with the customs service of the U.S. to prevent infringing of imported goods.

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Understanding the distinction between a copyright and trademark is necessary. It really helps. The differences between the two can really come into play with some Public Domain materials, especially images, movies and music. It is possible to find resources that are in the Public Domain but are still protected by trademark. A good example of this would be an ad advertising Coca-Cola from a 1922 magazine. The magazine may be in the Public Domain, but Coca-Cola retains the trademark control of their brand.

Another excellent example of trademark protection concerns the popular book, “Think and Grow Rich” by Napoleon Hill. The first version of the book, which was published in 1937, is in the Public Domain and you do have a legal right to use that text. However, the phrase, “And Grow Rich” has been trademarked by the Napoleon Hill Foundation, thereby limiting its use. What that means is that you cannot produce a derivative product and use a title that includes the words, “And st Grow Rich,” like “Think and Grow Rich Study Manual for the 21 Century.” The

Napoleon Hill Foundation will be in touch if you do. You could, however, title the same material, “Successful Thinking Study Guide for the 21st Century.”

A trademark infringement is possible, if you will be able to prove that there is a “possibility of confusion” between your trademark and the purportedly infringing mark. Such possibility of confusion will be determined through a “trademark analysis,” wherein the following items will be analyzed: •

The structure of the mark, both interior and exterior.

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The connotation of the mark. The meaning can be explicit or implied.

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How the mark is pronounced will be reviewed as well.

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The relation of the infringing mark to the goods or services will also be analyzed.

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The impression of the public will also be assessed. Actual test impressions on the consumers may be done.

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The common penalty being given to a party who has been proven guilty of trademark infringement is “injunction.” Injunction is a court regulation wherein it orders the party to avoid doing certain actions such as infringing marks. Contrary to the common belief, injunction is not a monetary judgment.

There are instances that “monetary relief” is bestowed to a winning party. Such monetary respite may include the profit lost by the defendant, the claimants’ sustained damages and the over-all cost of action.

“Trademark dilution,” can be sought by plaintiffs with well-known trademarks. By doing so, the infringed mark will not be further utilized. There are factors to consider for a trademark to be specified as “famous” before an infringed mark will be blurred or tarnished.

Trademark Genericide* A trademark registration is renewable. If a trademark owner wishes to do so, he may maintain a registration indefinitely by paying renewal fees, using the trademark and defending the registration.

However, a trademark or brand can become unenforceable if it becomes the generic term for a particular type of product or service – a process called "genericide." If a mark undergoes genericide, people are using the term generically, not as a trademark to exclusively identify the particular source of the product or service. One famous example is "thermos" in the United States.

Because trademarks are registered with governments, some countries or trademark registries may recognize a mark, while others may have determined that it is generic and not protectable as a trademark in that registry. For example, the drug "salicylic acid" (2-acetoxybenzoic acid) is better known as aspirin in the United States – a generic term. In Canada, however, "aspirin" is still a trademark of the German company Bayer. Bayer lost the trademark after World War I, when

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the mark was sold to an American firm. So many copycat products entered the marketplace during the war that it was deemed generic just three years later.[6]

Terms can be deemed "generic" in two ways. First, any potential mark can be deemed "generic" by a trademark registry, that refuses to register it. In this instance, the term has no secondary meaning that helps consumers identify the source of the product; the term serves no function as a "mark". Second, a mark, already in use, may be deemed generic by a court or registry after the mark is challenged as generic – this is known as "genericide". In this instance, the term previously had a secondary meaning, but lost its source-identifying function.

To avoid "genericide", a trademark owner must balance between trying to dominate the market, and dominating their market to such an extent that their product name defines the market. A manufacturer who invents an amazing breakthrough product which cannot be succinctly described in plain English (for example, a vacuum-insulated drinking flask) will likely find its product described by the trademark ("Thermos"). If the product continues to dominate the market, eventually the trademark will become generic ("thermos").

However, "genericide" is not an inevitable process. In the late 1980s "Nintendo" was becoming synonymous with home video game consoles but Nintendo was able to reverse this process through marketing campaigns. Xerox was also successful in avoiding its name becoming synonymous with the act of photocopying (although, in some languages (Russian) and countries (like India), it became generic).

Trademarks currently thought to be in danger of being generic include Jello, Band-Aid, Rollerblading, Google, Spam, Hoover, and Sheetrock. Google vigorously defends its trademark rights. Although Hormel has resigned itself to genericide [5], it still fights attempts by other companies to register "spam" as a trademark in relation to computer products [6].

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When a trademark becomes generic, it is as if the mark were in the public domain.

Trademarks which have been genericized in particular places include: Escalator, Trampoline, Raisin Bran, Linoleum, Dry Ice, Shredded Wheat (generic in US), Mimeograph, Yo-Yo, Kerosene, Cornflakes, Cube Steak, Lanolin, and High Octane, (Source: Xerox ad, reprinted in Copyright, Patent, Trademark, ..., by Paul Goldstein, 5th ed., p. 245) as well as Aspirin (generic in the United States, but not in Canada), Allen wrench, Beaver Board, Masonite, Coke, Pablum, Styrofoam, Heroin, Bikini, Chyron, Weedwhacker, Kleenex, Linux (generic in Australia) and Zipper.

Licensing Non-equivalence of Licenses* For various reasons, including the uncertainty in international law, the fear of liability suits, and of course the not-quite-settled state of U.S. law, licenses have become popular as a substitute for dedicating work to the public domain. Such a license would grant permission for all of the acts which are restricted by copyright law. Such a license is sometimes called a "public-domain equivalent license," which is somewhat of a misnomer. A more accurate term is "permissive free software licences".

There are several ways in which this license does not substitute for a true public domain release.

Revocability where no consideration A "bare license" unsupported by consideration is (theoretically) revocable at will.

A license, generally in the law, is permission to do something that would ordinarily be a trespass. For example, when a friend is invited to a home for

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coffee, the friend has a license to remain in the house. The friend can be kicked out of the house at any time. However, if the friend has paid money and signed a contract to live in the house for a month, he has the right to stay.

Revocability is not a problem in practice for two reasons. Entities which release software (such as M.I.T. and the University of California) are generally disinclined to be obnoxious. Second, there are certain legal defenses which could be raised, such as an "implied license by legal estoppel," if the original license purported to be perpetual, or the flimsier defense of equitable estoppel otherwise. However, most licenses, even the "public-domain equivalent" licenses, do not purport to be perpetual. The M.I.T license, for example, does not.

A "bare license" of free software has been revoked in the past. Simply because a friendly entity released a program under a license does not mean that the friendly entity will continue to hold the copyright in the future. In the well-known CyberPatrol case, the defendants settled in part by transferring the offending program to a hostile party. The hostile party immediately revoked the GPL license of the program. (As a general rule, licenses are revocable, and the GPL does not purport to be perpetual.) His solution is to rely on 17 USC 205(e), which holds:

(e) Priority Between Conflicting Transfer of Ownership and Nonexclusive License. — A nonexclusive license, whether recorded or not, prevails over a conflicting transfer of copyright ownership if the license is evidenced by a written instrument signed by the owner of the rights licensed or such owner’s duly authorized agent, and if — (1) the license was taken before execution of the transfer; or (2) the license was taken in good faith before recordation of the transfer and without notice of it.

To do so, someone signs a license to a friendly party, like the FSF, which, in his theory, preserves the GPL license to the world forever. (He observes that under

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other federal law, this can be done electronically, despite the language saying "written instrument signed.") It is certainly possible that Eben Moglen's interpretation would be upheld in court, but the case would be far from a slamdunk, especially in a case like CyberPatrol where the new copyright holder has good reason to want the license revoked.

The problem with Eben Moglen's interpretation comes from the unique construction of the GPL. The GPL purports to grant a new license from the original grantor, rather than each succeeding author of a program granting a sublicense to the next. By the very terms of the statute, however, licenses from the original licensor are only protected if the license was granted before executing the transfer. (New licenses from the original licensor are not allowed, because the original licensor no longer holds the copyright to the work.) Therefore, further distribution of a GPL program is significantly limited after GPL is revoked. To be precise, the current holders of the program are authorized to modify and distribute the software, if they hold a "written instrument signed by the [former] owner," but the recipients of the software may not further redistribute it.

Verbiage The license will usually contain language perpetuating itself, of several kinds of wording. It can be unclear what license applies to what part of the work, increasing the likelihood that provisions pertaining to certain parts of the work will be breached. Outside the context of computer software, it may not even be possible to use a license due to excess verbiage. Magazine publishers might acquiesce to an author's request of putting a public domain notice on, say, a magazine article, but not allow several column inches to be filled with license boilerplate.

Privity problems An unfortunate problem with proliferating licenses is privity. In short, when a user has rights under a sub-license, they come only from the person who sub-licensed

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the work to him. It does not matter on what terms that person licensed the work.

For instance, the original person may have paid money to receive extra commercialization rights. The book Open Source Licensing by Lawrence Rosen explains that virtually all open-source licenses use a "sub-licensing" model, where each user's rights come from the person who gave him that copy. The GPL is one of the very few that purports to issue rights from the original licensor.

It is well-settled that work in the public domain keeps that status, even after being embedded in a copyrighted work. (See Nimmer above.) So that work can be extracted and used in another work. But if a liberally-licensed work has been included in a software program with a draconian license, it is not possible to legally extract the liberally-licensed work from the program, unless the license is an unusual one which purports not to sub-license. All of the user's rights flow from the license under which he received the program; it is irrelevant whether the previous person was subject to a more lenient license.

Instead the user must find the original, liberally-licensed work and take from that.

For example, the original 4.4BSD lite release was missing several important files and would not run directly. Suppose that the developers who made the software work chose to release the software under a harsher license which imposes restrictions against commercialization, rather than preserving the original license.

Now suppose 10 years later someone wants to use some code from BSD in a commercial program. It might be impossible to track down an original copy of 4.4BSD lite, but strictly speaking they are not permitted to take even original BSD code out of the modern version.

Licensing Restrictions There are situations where a resource may be in the Public Domain but its use may still be limited due to licensing restrictions. This is where the owner of the Public Domain work—a painting for instance—has the right to limit access to the

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piece, even though it is in the Public Domain. Attorney Stephen Fishman provides greater insight into this in his excellent book, The Public Domain:

“Theoretically, once a work of art enters the public domain it can be copied freely by anyone for any use. However, to make a copy you must first have access to the original. And here lies the problem: Owners of works of art in the public domain are under no obligation to give anyone access to copy the work. Even when a work of art is in the public domain, the canvas, marble, clay, or other physical substance in which it is embodied is still owned by somebody—whether a museum, gallery, or private collector. Since a work of art is a piece of personal property as well as a work of authorship, the owner enjoys all the rights of any personal property owner. Copyright protection may expire or never exist in the first place, but personal property rights attach to all works of art and last forever.

“Private owners of public domain works of art are under no obligation to allow anyone into their home to make copies of the art or even to view it.

And most major museums in the United States restrict the public from taking photographs of their collections. “

“If you want a high-quality publishable photograph or other copy of a painting or other artwork, you must ask the museum to provide you with one. You will be charged a fee for this and usually required to sign a license agreement restricting how you may use the photograph or other copy. Such licensing fees are a major source of income for many art museums. Moreover, many museums will not agree to license their works for products that might compete with their own products, such as calendars and note cards.”

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(Fishman, Stephen, The Public Domain: How to Find & Use Copyright-Free Writings, Music, Art & More (Berkeley, CA: Nolo, 2004), 160-161.)

When Public Domain works are made available to the public by the owner of that work, the owner has every legal right to charge a fee for access to the work or to make copies of the work. The owner may also require the user to sign or accept a license agreement which restricts how the work can be used. This is especially true when it comes to using a work for commercial gain, such as on t-shirts, mugs, posters, etc.

Licenses take on many forms from actual contracts that you sign to specific agreements that are negotiated to meet licensor requests. Licenses can also take the form of click-wrap licenses, as in the case of distributing Public Domain works online or by disc, such as a DVD or CD-ROM. The click-wrap license will appear on-screen and require you to “accept” it by clicking on a button in order to access the materials.

“Among other things, these license agreements impose restrictions on how the licensee (the person obtaining or accessing a copy of the work) can use the work. Typically, the licensee is barred from making more than a specific number of copies or reselling them to the public. The licensee may even be barred from creating new works from the public domain materials or displaying or performing them in public.

If the licensee violates the restrictive terms contained in a license, the licenser (person who owns the copies of the public domain materials) can’t sue for copyright infringement because the materials are in the public domain—they have no copyright protection. Instead, the licenser threatens or actually does sue the licensee for violating the license. This is a suit under state law for breach of contract. (Ibid, 47.)

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In effect, people who use such licenses are trying to use contracts to obtain the same exclusive rights that are provided under copyright law, rights they can’t get because the work is in the public domain.”

If you would like to learn more about licensing, be sure to check out LicensingPages®. They provide excellent resources on how licensing works, how to obtain licenses, how to create them for your own products or brands and more.

Their web address is: www.licensingpages.com.

Patent* With regards to patents, on the other hand, public use or publishing the details of an invention before applying for a patent will generally place an invention in the public domain and (in theory) prevent its subsequent patenting by anyone – an effective disclaimer. For example, a chemistry journal publishing a formula prevents patenting the formula by anyone. This tactic was commonly used by Bell Labs. The famous Bell Labs Technical Journal was sent free of charge to the library of the U.S. Patent Office to establish a base of prior art without the inconvenience, cost, and hassle of filing patent applications for inventions of no immediate monetary value. (Unix was famously described in this journal.) This is sometimes called "defensive disclosure" - one way to make sure you are not later accused of infringing a patent on your own invention. There is an exception to this rule, however: in U.S. (not European) law, an inventor may file a patent claim up to one year after publishing a description (but not, of course, if someone else published or used it first).

In practice, patent examiners only consider other patents and the books they have in their library for prior art, largely because the patent office has an elaborate classification system for inventions. This means that an increasing number of issued patents may be invalid, based upon prior art that was not brought to the examiner's attention. Once a patent is issued, it is very expensive

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to invalidate. Publishing a description on a website as a pre-emptive disclosure does very little in a practical sense to release an invention to the public domain; it might still be considered "patentable", although erroneously. However, anyone aware of an omitted prior art citation in an issued patent may submit it to the US Patent Office and request a "reexamination" of the patent during the enforceable period of the patent (i.e., its life plus statute of limitions). This may result in loss of some or all of the patent protection of the invention, or it may backfire and actually strengthen the claims.

An applicant may also choose to file a Statutory Invention Registration, which has the same effect as a patent for prior art purposes. These SIRs are relatively expensive. These are used strategically by large companies to prevent competitors from obtaining a patent.

Section 102(c) says that an invention that has been "abandoned" cannot be patented. There is precious little case-law on this point. It is largely a dead letter.

If an inventor has an issued patent, there are several ways to release it to the public domain (other than simply letting it expire). First, he can fail to pay the maintenance fee the next time it is due, about every four years. Alternatively he can file a terminal disclaimer under 37 CFR 1.321 for a reasonable fee. The regulations explicitly say that the "patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns." Usually this is used during the application process to protect another patent from a "double patenting" invalidation. Lastly, he may grant a patent license to the world, although the issue of revocability may raise its head again.

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Trade secret* If guarded properly, trade secrets are forever. A business may keep the formula to Coca-Cola a secret. However, once it is disclosed to the public, the former secret enters public domain, although an invention using the former secret may still be patentable in the United States if it is not barred by statute (including the on-sale bar)[4].

Some businesses choose to protect products, processes, and information by guarding them as trade secrets, rather than patenting them. Hershey Foods, Inc., for example, does not patent some of its processes, such as the recipe for Reese's, but rather maintains them as trade secrets, to prevent competitors from easily duplicating or learning from their invention disclosures.

One risk, however, is that anyone may reverse engineer a product and thus discover (and copy and publish) all of its secrets, to the extent they are not protected by other laws (e.g., patent, contract).

In Summary The most important point I want to make through this report is that you do your homework. If you find resources you want to use, but are unsure if they are in the Public Domain, do your due diligence. The best and safest way to verify the work or resource is through the use of a Copyright or Intellectual Property Attorney.

They will confirm the status of the work or resource for you, for a fee. The fee is a small price to pay for the peace of mind you’ll have knowing that you are swimming in safe, “shark-free” Public Domain waters.

* This portion excerpted from Wikipedia:Copyrights, http://en.wikipedia.org/wiki/Public_domain; accessed 4/10/2007

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Recommended Tools The Public Domain Expert Toolbar – Gain easy access to over 450 Public Domain related websites, over 40 specialized Public Domain Search Databases and much more with this powerful toolbar that works right within Internet Explorer and Mozilla Foxfire.

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