Wednesday, September 22, 2010

Moving Legal Muse Blog

Please note that Legal Muse has moved to

Monday, July 19, 2010

Ringtone Copyright Royalty Rates

"Answer the phone, answer the phone" - that's what my cell phone screams in the voice of my daughter whenever someone tries to reach me. I recorded it a while back and it amuses me and everyone around me every time it plays. What happens, however, when you record someone else's creative work as your ring tone?

Under US copyright law, users of compositions must pay copyright owners when recording a composition. When the recording party and the copyright owner do not negotiate a license, Section 115 of the Copyright Act provides that the Copyright Royalty Board can establish a predefined rate which allows the recording party to record the composition without the explicit permission of the owner of the composition's copyright. In traditional recording settings, this is often refereed to as a mechanical.

In the recent decision DC Circuit decision Recording Indus. Assn. of Am. v. Library of Cong., No. 09-1075 ruled that the Copyright Royalty Board's decision that royalties paid for use of compositions as ring-tones should be be paid as 24 cents per recording (penny-rate) rather than as percentage of the wholesale rate (the RIAA argued the rate should be 15% of the whole rate charged). The court affirmed the reasoning of the Copyright board who found that “that a single penny-rate structure is best applied to ringtones as well as physical phonorecords and digital permanent downloads” because of “the efficiency of administration gained from a single structure when spread over the much larger number of musical works reproduced.”

The basic reasoning - which I agree with - was that a flat penny rate is the fairest and simplest method of compensating individual songwriters. This is usually true for most creatives. Keeping licensing of copyright and trademarks as simple as possible reduces disputes over the method of calculations.

Sunday, June 13, 2010

Twitter Bribe to Benefit Springboard

The gist: To benefit Minnesota Creatives, I will bribe the entire world to follow me on Twitter for $1 each.

I’ll also be drawing for 2 tickets to Springboard for the Arts' Bounce Bash to benefit the Artists' Access Healthcare program.

Here’s how this is going to work:

If I have 500 total followers by noon on June 25th, I will donate $250 to Springboard for the Arts. Follow me here:

For every follower (new or old) that sends out a tweet promoting Springboard and the Bounce Bash using the hashtag #bouncebash, I will enter them in a drawing for the tickets.

Not sure of what to say? Here’s the simple version for Twitter:

Kunkle_Law – Donating $1 to @Springboard #bouncebash per Twitter follower:

For more information on Springboard and the Bounce Bash go to:

If you are interested in doing more, please consider donating a few dollars directly to Springboard or coming down on the 25th to the Bounce Bash.

I hope you choose to participate and make a difference.


Thursday, June 10, 2010

AIGA Solopreneurs breakfast event

From AIGA Minnesota Website. Sign-up available at the AIGA website. Event is Thursday, June 24, 2010.

Discover your entrepreneurial spirit and business desire. If freelancing or self-employment is in your future, this event will provide ideas, possibilities and insight. Join us for this special event, where a trio of speakers awaits your questions. Hear from Doug Powell, Principal, Schwartz Powell; Dan Woychick, Principal, Woychick Design; and Kenneth Kunkle, Kunkle Law PLC.

Kenneth Kunkle is a local attorney whose practice is focused on working with creative professionals. Blogging at, Ken provides a wide field of knowledge in the areas of business, copyright and trademarks. His long history working in, and with, a variety of creative fields provides a unique understanding of creativity and the law. Ken will be discussing issues related to business structures, work for hire and independent contractor status.

Doug Powell − a designer, business strategist, entrepreneur, and curator of the blog Merge − will offer next steps to help you build your great new business ideas. Or maybe allow Doug’s inspiration to bust you out of a narrow way of working. He suggests the next generation of designers will have to find other ways of working, providing value and generating revenue. Learn tips to start and launch your design-driven business. and

Dan Woychick is a designer and creative strategist with over 20 years dedicated to helping non-profit organizations communicate more successfully. He has helped clients with brand identity and positioning, market research, and the design and production of print and electronic communications. Dan is experienced in building a network of collaborators, hiring employees, working from home and renting office space. He will share his thoughts on marketing yourself to find clients and focus your work. For more info, go to or read his blog, think + do: an exploration of non-profit marketing and design

Time: Doors open at 8:30 A.M.; Presentation from 9:00–10:30 A.M.

Monday, June 7, 2010

Magic Words for Copyright Transfer

Last week the 8th Circuit Court of Appeals (which covers Minnesota) ruled in Thomsen v. Famous Dave's of Am., a case involving a copyright infringement claim by an independent signage designer that designed and built various signs and interior elements for Famous Dave’s Restaurant around the Twin Cities. Following a prior dispute between the parties, where Thomsen alleged infringement of his copyright (no work for hire agreement or other assignments were entered into), the parties entered into a settlement agreement. As a part of that settlement, the parties agreed that:
    Thomson ". . . is releasing all copyright, proprietary design and sign work to [Famous Dave's] in all other restaurants that he has worked on with the exception of . . ."

Adopting language from the 9th Circuit, the Bench ruled that
    " A transfer of ownership requires no "magic words" to satisfy copyright law; even "a one-line pro forma statement will do." (citing, Radio Television Espanola S.A. v. New World Entm't, Ltd. , 183 F.3d 922, 927 (9th Cir. 1999)).

While not earth-shattering, this opinion is interesting in that it appears to be the first opinion in Minnesota that explicitly adopts the position that simple wording in a copyright transfer can meet the necessary language needed to assign a copyright under Section 204(a) of the Copyright Act as long as the basic terms are of the transfers are spelled out.

For Creatives, this opinion makes clear the importance of having clear and understandable agreements in place. Reliance on technicalities is not in the best interest of the parties. While some aspects of copyright transfers and assignments require “magic words,” other aspects can be transferred or otherwise affected by ill-fitting language and contradictory clauses. Having a contract reviewed by an attorney can help by providing trained eyes to help make sure that what you think you are signing is what you are actually signing.

Monday, May 17, 2010

Trademarks and Pepper Potts - Is Iron Man a good or a service?

Warning: this may be one of my more nonsensical posts.

After seeing Iron Man 2 this week, I felt compelled to speak out about the misinformation propagated by Pepper Potts. During a scene in which Tony comes into Pepper's office, we overhear Pepper talking to an unidentified party about the suit. In the conversation (which I am editing to avoid spoiling it for anyone who went to see Robin Hood this weekend instead), Ms. Potts repeatedly references the intellectual property right in the suit being based on trademark law. My beef? It is clear from the story line, that the issue is one of patent law, not trademark.

Trademarks generally serve two purposes: 1) to provide consumers with an assurance as to the source of goods or services; and 2) to protect the value that a business receives from creating and marketing a product. Patents, on the other hand, are intended to protect inventors by giving them the sole ability to utilize or license their creations. While the suit could serve as a trademark for Tony Stark's services as a super hero, it should be clear to anyone that has seen the movie that the discussion in question was more properly framed as an issue of patent law.

Am I being nit-picky? Well . . . Yes. But as a copyright and trademark attorney, Pepper's lack of understanding ruined the entire film for me - or at least it distracted me for 5-10 seconds.

Wednesday, May 5, 2010

Does theTwitter ToS dedicate everything you post to public domain?? - NO!

I use to say that it was a myth that if it was on the Internet it was free to use. While still a myth, photojournalist Daniel Morela may have reason to question whether this in fact still true.

Morla was recently sued by Agence France Presse (AFP) for “antagonistic assertion of rights” for accusing AFP of violating his copyright in several photos taken following the January earthquake - Morela has counter sued for copyright infringement. AFP has asked for summary judgment that it did not infringe on Morela's copyrights (complaint). AFP's claims are interesting because, in part, they note that since Morela used Twitter to distribute the photos (which he did not - he used Twitpic), the Twitter Terms of Service (ToS) granting Twitter the right to distribute the photos should be extended to AFP as well. Besides the fact that AFP appears to have little understanding of the facts of their own case, this reading of the Twitter ToS is a little odd.

The Twitter ToS provide that:
    You retain your rights to any Content you submit, post or display on or through the Services. By submitting, posting or displaying Content on or through the Services, you grant us a worldwide, non-exclusive, royalty-free license (with the right to sublicense) to use, copy, reproduce, process, adapt, modify, publish, transmit, display and distribute such Content in any and all media or distribution methods (now known or later developed).

    You agree that this license includes the right for Twitter to make such Content available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such Content on other media and services, subject to our terms and conditions for such Content use.

While it is possible that AFP is making the argument that the second clause which allows Twitter to make the content available to partners and that they in fact are partners, it is clear from anyone's reasonable reading that this scenario is not what is intended by this agreement.

The much sparser Twitpic ToS has a similar clause, but its sparser writing style makes the intent of these types of clauses much more clear. The Twitpics Terms of Services specifically notes:

    By uploading your photos to Twitpic you give Twitpic permission to use or distribute your photos on or affiliated sites

    All images uploaded are copyright © their respective owners
While I believe that AFP's arguments are weak (though other claims raised by AFP may have more merit), they do help to illustrate that Creatives that use various forms of social media or SaaS solutions related to the creation or distribution of their work should be aware of, and understand, the ToS for those sites. Otherwise, you risk obscure boilerplate agreements giving away your work for free - or at least claims to that effect by multinational corporations.

Thursday, April 29, 2010

CoCo Day Camp: “Common Myths and Misconceptions About Copyrights and Trademarks”

On Thursday, May 6th, I'll be providing a seminar for creative professionals on how creative professionals are affected by copyright (e.g., public domain, fair use, joint works and work for hire) and trademark law at CoCo in downtown St. Paul. the program is set to run from 10am to 12pm.

Session + 1/2 day of coworking: $30
Session only: $15

About CoCo:

CoCo is a coworking and collaborative space in Lowertown St. Paul (and coming soon to Minneapolis), where independent workers and small businesses can gather to share ideas, team up on projects and get some work done. We’re an alternative to working from home or the local coffee shop.

Who can Sue when a Freelancer is Discriminated Against?

Freelancers take note: Under Minnesota Law if you have formed an LLC or other business entity and you experience discrimination at the hands of one of your clients, as an individual you cannot make a claim under Minnesota's Human Rights Act (Minn. Stat. § 363A.17 (2008)), which authorizes parties to a business contract to sue for business discrimination in the performance of that contract.

The Minnesota Supreme Court reasoned in Krueger v. Zeman Construction Co. that the focus of the statue was the relationship of the parties, not on the individual subject to the discrimination. As a result, the court argued that an individual employee, even one that is a single member owner of an LLC, is not the intended beneficiary of the statute and therefore they cannot file a lawsuit in their individual capacity.

While I generally believe freelancers should consider business entities like LLC over that of sole proprietorship, this case provides a stark example of how there are some disadvantages to forming a separate legal entity and an evaluation of the advantages and disadvantages should always be considered.

Monday, April 26, 2010

The 2010 Midwest Art, Entertainment & Sports Law Institute

I will be presenting along with many other area attorneys at next weeks Midwest Art, Entertainment & Sports Law Institute. Come out and hear about some the latest opportunities and challenges facing the attorneys for the art, entertainment and sports communities.

Highlights Include:

  • Former ASCAP executive and current president of a music publishing company, attorney Ron Sobel will “teach, discuss, rant and rave” about intellectual property pitfalls, new media trends, current revenue models and licensing protocols

  • Music publishing contracts and other issues in the digital age

  • The FTC’s take on endorsements and Internet advertising

  • The hottest legal and ethical concerns in college sports

  • A review of core intellectual property concepts, as well as contract, licensing entity basics with a nod to the creative client

  • The Ramifications of Supreme Court Review of American Needle

  • Your Client Said WHAT?? Lauren Bloom, J.D., L.L.M., author of The Art of the Apology, will give us valuable insights into helping our clients out of potential PR and legal nightmares

Monday, March 29, 2010

When is a farm boy just like any other farm boy?

When is a farm boy just like any other farm boy? That's the question at the heart of a recent Federal Circuit decision (Odom's Tennessee Pride Sausage, Inc. v. FF Acquisition, LLC, No. 09-1473) involving a decision by the USPTO to grant a trademark registration to FF Acquisitions (a SuperValu company) over the objection of Odom (a retail food conglomerate).

Despite the fact that the registration in question was merely adding the body onto an already registered mark making up the torso of a farm boy (mark on the right), Odom was concerned that the mark was now likely to confuse consumers and opposed the registration, citing its own registrations. Even though Odom argued that there were other factors to be considered under the DuPont test for likelihood of confusion, the USPTO and the Circuit court summarily dispatched the complaint by noting that the registered marks differed in the size and shape of the hands, styles of hats, shoes on the feet, and apiece of straw hanging from his mouth.

In its appeal to the Federal Circuit, Odom argued that the USPTO was wrong in basing its decision that there was no likelihood of confusion based a single DuPont factor and not considering other factors. The legal question was whether consideration of the single DuPont factor involving similarity of the marks was enough for the court to conclude that there was no likelihood of confusion and to allow registration - it was. The Circuit court went further and noted that even if the USPTO had considered all the other factors, the dissimilarity of the marks was , by itself, a strong enough reason to deny Odom's claims and to allow registration of FF Acquisitions' mark.

This opinion is a reminder that trademarks are limited and do not create ownership in an entire concept. The focus when adopting a mark is its overall distinctiveness. A mark cannot be deconstructed into individual pieces for the purpose of eliminating distinctive qualities, because that is not what a consumer does. It is the overall impression that makes the difference.