Do I Need Clearance in the U.S. if I Acquire Rights from a Public Domain Source Abroad?

 

Dear Rich: I'm really hoping you can answer my question. I'm in the process of publishing a book that will contain lots of images, mostly of artworks by one artist in particular. The artist is French, I am British, and my publisher is based in the U.S. The artist died over 70 years ago, and in Britain and Europe, his works are out of copyright. But in the U.S., there's a copyright extension on the works. If I, the British author, am getting images from European suppliers, for my American-published book, do I have to pay for copyright clearance?

Yes, you will need U.S. clearance for some of the works. Although most countries have placed the artist's works in the public domain (based on the life+70 years rule), the U.S. follows a different course. A work first published outside the U.S. (before 1978) is protected in the U.S. for 95 years from publication. That puts all of the artist's works published before 1925 in the public domain in the U.S. Because your publisher is distributing the book in the U.S. you will need clearance for all works published after 1924, regardless of where you obtained the source artwork.

Do You Have to Be a U.S.citizen to register copyright?

Dear Rich: Can a non-U.S. citizen or alien register a copyright at copyright.gov? What if one co-writer is a U.S. citizen, but the other co-writers are not?

Non-U.S. citizens can register works at the U.S. Copyright Office, and it shouldn't matter what percentage of co-authors are U.S. citizens. According to the Copyright Office, anyone, regardless of citizenship status can register their work provided it is: (1) unpublished, or (2) first published in the U.S., or (3) first published in a country with which we have a copyright treaty, or (4) the work was created by a citizen or domiciliary of a country with which we have a copyright treaty. See Circular 38a, International Copyright Relations of the United States, for the treaty status of specific countries.

Does A Federal Trademark Applicant Need Physical Presence in U.S.?

Dear Rich: Can a non-U.S. citizen obtain a federal trademark application?
Yes, a non-U.S. citizen or company can register a trademark in the U.S. However, if the foreign-applicant doesn't reside or have a physical presence in the U.S., the applicant will have to  appoint a domestic U.S. representative -- that is, someone residing in the U.S. (typically a trademark attorney) who is appointed to receive notices and correspondence regarding the trademark and application. Keep in mind we're only talking about applications for U.S. registration -- that is the foreign citizen or company must be using the mark on goods or services within U.S. borders (or have a good faith intent to use it). A non-U.S. citizen or company that has registrations already issued in the applicant’s home country (that cover the same mark and essentially the same goods and/or services) can also seek federal registration under Section 44(e) of the Lanham Act.

Did I Infringe at ESL School Abroad?

Dear Rich, I taught at two for-profit, non-compulsory private English as Second Language (ESL) schools overseas that both used reading guides for the reading books that they assign the students to read or listen to as an audio recording. The guides included quotes, references, and pictures directly from the books assigned. The students had to buy the guides and novels (or audiobooks). I am not sure how the recordings were made, or if they were officially licensed by the publishers. I didn't bring this up with my employers for fear of losing my job. Was I using pirated material? It's possible you're asking because you want to report your ex-employers for copyright infringement. That's not unusual. Disgruntled ex-employees are a major source for reporting intellectual property violations (and they're often rewarded for their reporting). 
In any case, we couldn't tell you with any certainty if a copyright owner could pursue an infringement claim. Most likely the unauthorized audio recordings constitute infringement but as for the rest, that depends on the amount taken, whether the use is excused as a fair use, whether the copyright owner can maintain a lawsuit in the foreign jurisdiction (or has a basis for suing in the U.S.), and who committed the alleged infringement. 

Can I File for PPA in Foreign Language?

We already answered this question once but we loved our infographic (and the information is still current) so we brought it back for an encore.

Wants NDA+ for Taiwanese Manufacturer

Dear Rich: I’m trying to find a triple-N agreement to send to my Taiwan manufacture (NNN = non-disclosure, non-use and non-compete). I am concerned that customers in the Far East will try to get him to manufacture our product directly for them. If we have a good NNN agreement, it will help dissuade him from doing that. Can you direct me to any resources? We've spotted a few of these templates floating around the Internet, but from our research (and limited experience) it's not a good idea to use off-the-shelf NDA-type agreements with foreign manufacturers. The main reason is enforcement: a manufacturer that operates solely in the People's Republic of China (ROC) would only be subject to Taiwanese law and you would need to rely on ROC courts to enforce the agreement. That reduces the chances of enforcing an English-language off-the-shelf agreement -- particularly if you are relying on American style injunctive relief (a hard sell in some Asian courts).  The only way to increase your chance of enforcement is to show the manufacturer that you mean business by preparing a properly translated agreement that caters to the laws of the ROC -- or Peoples' Republic of China (PRC), depending on who is really in control in Taiwan. That means engaging an English speaking lawyer who is familiar with ROC laws. For more information, you may wish to check these two articles: one explains why a Triple-N agreement is the way to go with Chinese manufacturers, and the second explains the common pitfalls when trying to make the agreement enforceable.
An exception .... One exception to the rules expressed above is if the foreign manufacturer has a presence in the U.S. -- for example, there's a U.S. subsidiary or headquarters. In that case, the company is likely to be subject to U.S. jurisdiction and you may be able to enter into a typical template agreement. If you're seeking a basic NDA for various purposes, we've uploaded a collection of agreements with explanations.

Can We Sell Irish Street Art

Dear Rich: The attached photo was taken in Dublin Ireland. Someone had added a little graffiti and the overall look was pretty cool so we took some photos. It was out on the street, no trespassing involved here. I’m wondering if we would be in the clear to publish a series of these photos to sell as open edition print reproductions? We agree; this is some pretty cool street art. As we've discussed before, art (unlike architecture) that's publicly viewable from the street is protected by the same copyright rules as art that is hanging within a museum. The only exception is that there might be a tendency for judges to be more liberal applying fair use rules. For example, reproduction of this image as one element in a Dublin street scene would probably be fine. But featuring the photo and selling individual prints would likely violate the artist's copyright (we assume the graffiti is not by the same artist and in any case, it is not protectible). We're not experts on Irish copyright law but from what we've read, it seems as if the same basic rules apply in Ireland as in the U.S. (We're also not sure whether the copyright holder is Irish (as Dublin attracts foreign street artists). But in any case, most countries including the U.S. are treaty partners meaning that foreign copyright holders can claim certain rights in the U.S. For all these reasons, resale of this artwork could make you an easy target for an infringement claim.

Will NDA With Foreign Company Prevent Theft?

(c) Sasha Stim-Fogel

Dear Rich: I have a patent pending here in the states but I want a Chinese company to manufacture my product. Unfortunately, I don't have any intellectual rights overseas. Will a nondisclosure noncompete agreement keep a foreign company from stealing my idea? Neither a nondisclosure (NDA) or  a noncompete will keep anyone from stealing your idea whether in the U.S. or abroad. Agreements don't prevent wrongdoing, they merely establish the rules in the event wrongdoing occurs. An NDA is no different. For example, your NDA may establish the location of the lawsuit, whether the winner gets attorney fees, whether arbitration is mandatory, or the ease with which you can get an injunction.
Back in the U.S.S.A. NDAs enforced in the U.S. usually have a predictable outcome. But once you leave American jurisdiction, the results of enforcement are not as predictable and the costs of enforcement are far more expensive. That increases the odds that your NDA will be breached and that a foreign manufacturer will duplicate molds, copy packaging and send knockoffs out the backdoor and into countries in which you have no intellectual property rights.
Separating the good from the bad. Most foreign manufacturers rely on their credibility and trustworthiness to keep getting new business. So your first goal is to do your homework and try to figure out which ones are reliable and which ones are opportunists. The resources, below, may help you.
Protecting secret stuff only. Keep in mind that a nondisclosure will only protect against the disclosure of confidential information. Once your patent is published, it is no longer confidential. So the only thing your NDA can actually protect is confidential information regarding manufacture, sales and distribution, and know-how needed to produce and distribute the patented item. A noncompete is typically aimed at preventing ex-workers from competing against you and that's not likely to provide much benefit. However, some provisions, in conjunction with your NDA -- for example, an agreement that the manufacturer will not manufacture or distribute your product without your authorization -- can be crafted to deal with your specific situation. A lawyer's assistance may be required. In summary, get an attorney to make sure the agreement provides the best dispute-resolution procedures.
After you've found the best choice. Your lawyer may include provisions that will help you in a foreign deal. Here are some things to consider.

• Jurisdiction. The only way to get a foreign manufacturer into a U.S. court—unless the company does substantial business in the States—is to include a provision in the NDA that requires the manufacturer consent to U.S. jurisdiction. This may prove difficult to negotiate (and to enforce), as foreign manufacturers are often hesitant about submitting to the U.S. judicial system. 
• Choice of law. Every country has laws as to how contracts are interpreted. You would want the NDA to be interpreted according to U.S. law.
• Arbitration. Arbitration is similar to litigation but with less formality and expense. You’ll usually benefit by agreeing to have disputes arbitrated. Hopefully, the manufacturer will agree to arbitrate the matter in the United States. If not, there are three popular (though expensive) spots for international arbitration: London (the London Court of International Arbitration), Paris (the International Court of Arbitration of the International Chamber of Commerce), and Stockholm (the Arbitration Institute of the Stockholm Chamber of Commerce). Also, if possible, your agreement should award attorneys’ fees to the victor in the arbitration.

Resources. These resources may help you sort out manufacturers in foreign countries:

•  U.S. Department of Commerce (DOC) and the U.S. Small Business Administration (SBA) are interested in helping the sales of U.S. goods overseas. If an inventor has a track record and the possibility of actually placing a product in the market (or already has a product and is seeking to market it overseas), the DOC and SBA offer assistance. 
• Check out the Department of Commerce site at the International Trade Association (ITA) or the DOC’s export information. 
• National Trade Data Bank has the most extensive and detailed statistical information on trade in specific products and countries. It is not free, but you can enroll for a free guest subscription and try it out. 
• The Federation of International TradeAssociations (FITA) has a website with many links, leads, and statistics that can be helpful for international businesses. 

Wants to Dramatize Works of Persecuted Russian

Dear Rich: I have written a play in which I use the works of a Russian writer (in my translation)named Daniil Kharms (1905-1942). He wrote very short absurdist works, one-paragraph stories and the like, so I actually include several works in their entirety in the playscript. None of these works were published during his lifetime. (During his lifetime he only published two poems, plus many works for children, none of which I'm using.) I want to send the script for the play around to theaters without any questions about permissions hanging over it. I've looked at the Library of Congress website but question the value of ordering a search for so many short works. Kharms lived and died in Russia. (He died in a Leningrad prison during the siege of Leningrad. A friend hid and preserved his manuscripts.) He had no children; his wife died abroad in the late 1990s or early 2000s. There are various collections of his stories in English translation dating from the 1960s to the 1990s (on the copyright page of which, copyright notice is given for the translations; but not for the originals). There were two different Russian collections of Kharms's stories published in Germany in 1974 and 1978. In Russia itself, most or all of these works were not published until the late 1980s under Gorbachev. There is a "Complete Collected Works" in Russian which came out in 1998. Thanks for introducing us to the work of Mr. Kharms. We've reviewed the copyright notices for a few of the Kharms translations and can confirm that the copyright claims are only made to the translations and that there is no mention of a Kharms copyright or a license from anyone claiming to be the Kharms estate. For example, this copyright page from a British collection (Click Search Inside This Book and choose the copyright page) attributes authorship to Kharms, but that's all, apparently. For these reasons, we believe that currently Kharms' work qualifies as an orphan work, technically protected under U.S. Copyright but not enforced because the owner of rights can not be located. (That would explain the freedom with which translations have appeared.)
U.S. Public Domain. Hang on because things can get complex when analyzing the public domain. Here are few things to consider.

• Unpublished works. On January 1, 2013, all unpublished works (whenever or wherever created) by authors who died in 1942 will fall into the public domain in the U.S. So, anything by Kharms that hasn't been published will be PD. 
• Works Published Before January 1, 1978. The Russian collection of work published in Germany in 1974 would be protected for 95 years under U.S. Copyright provided that it had a valid copyright notice. 
• Works Published After January 1, 1978. The Russian collection of work published in Germany in 1978 receives the same term of copyright as if published in the U.S. -- that is, life of the author plus 70 years. So, that also would be public domain in 2013.

Copyright Office Records. It's quite easy to search the Copyright Office Records and we recommend that you do so (choose to search by name and type in "Kharms Daniil"). Our search seems to confirm that there is no copyright claim by Kharms' successors (assuming he has any). By searching the records, you will see that there have been dramatizations and translations, none of which attribute copyright to Kharms, and none of which claim copyright over the original work (only over the translations and modifications).

Can I File Provisional in Foreign Language?

Can I File Provisional in Foreign Language? (click to enlarge)