have you not allowed your work to go into public domain? Then when
the huge and corporate entity uses it, you already donct own the
design anymore.
That is simply not true. The design is mine to do with as I wish,
until if and when I should explicitly transfer the rights to
someone else. That includes not suing someone who uses the design -
it is all at my discretion.
IANAL (“I am not your lawyer”). but probably partly truth and partly
fiction. Unlike a trademark, a copyright doesn’t just go public
domain due to unstopped misuse, BUT there ARE time limits after which
the (presumed) owner CANNOT bring their civil action (criminal is
very unlikely to apply and benefits you nothing anyway).
Quote from the law, part b being the relevant one: "Section 507,
Limitations on actions
(a) Criminal Proceedings. Except as expressly provided otherwise in
this title, no criminal proceeding shall be maintained under the
provisions of this title unless it is commenced within 5 years after
the cause of action arose.
(b) Civil Actions. No civil action shall be maintained under the
provisions of this title unless it is commenced within three years
after the claim accrued."
If the above statement [the one about "public domain"] were true,
you could make a Mickey Mouse, sell it at a flea market, and Disney
would lose their rights because they didn't sue you. Believe me,
that is not the case. A design only enters the public domain when
the copyright expires or the owner dies - until then, somebody owns
it even if you don't know who.
But then I believe it starts getting into the realm of case law and
fairness and away from the clear(?) “black letter law.” Looking only
at copyright and not at any possible trademark issues, if you were to
sell your Mickey Mouse knockoffs at the flea market for 3 years
running then get bold and go big-time and start selling them through
Wal-Mart (unlikely scenario), Disney would for certain shut your and
Wal-Mart’s knockoff sales down through a court injunction. Any of
your copyright violating sales more than 3 years ago Disney couldn’t
do anything about but most likely they could come after you for
statutory damages and/or profits and/or attorney fees when they
prevail for anything within the last 3 years.
For that 3 years though additional factors I’m certain will be
considered. Did Disney know about your infringements and NOT act? Or
were they totally in the dark? If the latter likely they’ll get the
courts to award them more than if the former. And they will be
entitled to statutory damages and attorney fees, they did have their
registrations all in long before your infringement began.
In this particular case of mine, I know just exactly how the
design came to be in the store - it went to a now-defunct retail
store, who sent it to a now-defunct casting shop, who sold it to
the store in question, which store bought it in good faith.
Now suppose they, under this good faith assumption (which you have
now publicly stated you agree is valid), license the design to
Tiffany and it takes off and starts making them filthy rich. You,
we’ll assume, have known they’ve been selling “your” design as theirs
for over 3 years and you have not acted—you (most likely) don’t
even have a copyright registration filed.
You file your registration and sue. What exactly will the courts do?
What exactly will Tiffany do? What can the courts make them do? Your
attorney, wisely, asks for payment up front and advises you that when
all is over your costs are likely to be $250,000 - $500,000. You
believe the “good faith” firm and Tiffany have made and will continue
to make “millions” so you go for it. The instant they get the suit
paperwork both Tiffany and your local “good faith” firm suspend sales
of the design AND choose to vigorously defend themselves.
$398,000 and change later your lawyer “proves” your case. The “good
faith” seller and Tiffany are forever banned from selling your design
without your permission. Since you didn’t file your registration
timely (within 3 months of first “publication” of it [Section 412])
you aren’t entitled to any statutory damages or attorney fees, only
“Section 504(a) Damages and Profits. The copyright owner is entitled
to recover the actual damages suffered by him or her as a result of
the infringement, and any profits of the infringer that are
attributable to the infringement and are not taken into account in
computing the actual damages.”
My bet would be the court would, whether they found your
registration and suit “bad faith” waiting or not, not award you
anything and further that Tiffany and the “good faith” seller would
not wish to license from you any rights, after all, the craze created
when Tiffany offered the design died 4 years ago when you sued and
they took the design off the market. I.e., since you aren’t really
marketing that design yourself you haven’t sustained any damages and
neither Tiffany nor the “good faith” seller have made a nickel of
profit since the presumed “good faith” came to an end at the filing
of your suit.
Congratulations, YOU WON!!!
That doesn't alter the fact that it's still my design, I just
choose not to raise a stink over it, and any money I made would be
less than the loss of goodwill here in the SF jewelry business.
Now, if they should somehow discover me selling the design, and
come after me thinking it's their own, they would be in deep
doo-doo..
Um, how deep? $48,700 later you prove that it is your design (i.e.,
not a “work for hire” for the first store, etc., etc.) and they prove
you knew they were selling it without your permission yet you never
acted. They stop selling the design and keep all their “good faith”
profits. You lose $48,700 and weeks of valuable time. How deep? For
who?
My advice should they ever come knocking, get an attorney, assign
any rights you think you might have to them and promise and do stop
selling the design.
And if they license to Tiffany, you should come out with fabulously
better designs and offer Tiffany a licensing deal. Let the old one go
to the benefit of Tiffany and the “good faith” seller.
James E. White
Inventor, Marketer, and Author of “Will It Sell? How to Determine If
Your Invention Is Profitably Marketable (Before Wasting Money on a
Patent)” Info Sites: www.willitsell.com www.inventorhome.com,
www.idearights.com www.taletyano.com www.booksforinventors.com