Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[zuuw.com]

This question is related to the USA:

We developed an iPhone app containing video clips from a classic movie, which -according to several sources (Wikipedia, archive.org etc.)- fell into the public domain. So we believed we could use this material without any copyright infringements.

Now we got an email from a company, saying that they own the trademark and right of publicity pertaining to the makers of the movie.

Since we don't use the term they trademarked exactly I am not sure if we infringe these rights at all. We do use a word of it in the app name.

If this would infringe their trademark - would it be sufficient to rename the app?

Or is true what they say, that we cannot create (and offer) any works at all pertaining the makers of the movie (a slapstick group making lots of funny shorts decades ago), although the movie is in the public domain and Wikipedia says that "public domain works can be freely used for derivative works without permission"?

Thanks for any help in advance!

Best regards,

Christoph...

PS: I edited this post to remove all explicit details.

[JSonnabend]

Christoph -

I would not post the details you have posted here.  Anything said here might be discovered and used by the adverse party should things progress that way. 

I suggest going back and editing your original post to remove details.  Once that is done, the discussion on the merits might be more appropriate.  You might also think about contacting an attorney sooner rather than later if you are serious about moving forward.

- Jeff

[zuuw.com]

Thanks Jeff,

I followed your advice and removed all explicit details from my previous post. Do you have any advice concerning the topic as well?

We don't make much money out of the app, so I guess contacting a lawyer wouldn't pay out.

Thanks,

Christoph...

[JSonnabend]

From the sounds of it, their case is weak.  If I understand correctly, it sounds to me like you are free to do what you are doing.  That said, I don't have all the details and so you should not rely on my response. 

- Jeff

[Kaitlin]

I agree with Jeff.  This sounds to me like a thinly veiled attempt to use the trademark (and publicity) laws to get around the copyright law, by preventing people from selling the film (or parts of it) through precluding any reference to the title of, or the characters in, the public domain film.  A public domain film needs to be able to be identified by title or reference to characters, if the right to sell copies of it is to be at all meaningful.

Like Jeff, however, I'm just speculating here without full details and am not advising, but my feeling is that IF this is what's happening, and the complaining group is really trying to enforce an expired copyright via the trademark laws, that could be a violation of the antitrust laws, just as when a patent license is drafted so as not to expire when the patent has expired.  Copyrights are limited time monopolies and when someone tries to enforce such a monopoly after it's expiration date, it seems to me that as with patents such conduct should be counted monopolistic under the antitrust laws. 

If you can at all afford an attorney, however, it would be best to get IP legal counsel who knows trademark and copyright involved before going forward -- not just to protect you from these characters, but to ensure you're doing the best you can to protect your own interests for future sales of the app.

[zuuw.com]

Thanks for your answers... I do understand that these are your personal opinions, so its completely our responsibility what to do.

Since I'm pretty sure that the movie is in the public domain, we will keep offering the app, but we are unsure about the name:

Lets say the (registered) trademark they own is "The Two Hedgehogs" and the name of the app is "Hedgehogs" - would you think its an infringement of their trademark?

Best regards,

Christoph...

[Zonath]

I'd personally say that you'd want to avoid using a mark that alludes too heavily to another mark.  If we were talking about an episode of Star Trek, for example, and your app was named "Trek", I'd say that you might be causing yourself some unneeded problems. 

You also have to take into consideration how likely it is that someone would take your use of even an abbreviated mark as an indication of source or an endorsement by the holders of the mark in question.  I would tend to think that a not insignificant number of people would assume that a "Hedgehogs" app would have a seal of approval from the owners of the "The Two Hedgehogs" mark.

[JSonnabend]

On the other hand, you can use a mark to refer to the branded item by its brand name.  So if your app included footage from Laurel and Hardy, let's say, you could refer to it that way (but perhaps not brand your own product that way).

Also, the title of the clip/movie is not in and of itself a trademark.

- Jeff

[zuuw.com]

We will change the name to the title of the movie, whether its really necessary or not, but its probably the best way to avoid any confusion.

Thanks again, your answers helped me to figure out what to do.

Best regards,

Christoph...