Sallie Randolph

Ask Author Law

Another question about trademarks for authors

December 15, 2014

Tags: Trademarks, Author Law, Writing, Sallie Randolph, Authorlaw, Copyright, Publishing, Books, Contracts, Collaboration Agreement, IP Law, Intellectual Property

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: I’d like to know about titles and trademarks. I understand that titles cannot be copyrighted, but what about trademarks? I’d like to trademark the title of my book because it’s the first of a series of self-pub books and is the theme of motivational speaking I do. Is it possible to trademark my title? If not, can I trademark a concept belonging to me? Does that mean someone else can’t use this term in their title? If so, do I need to register my trademark somewhere like you do a copyright? Can I register it myself? What if I just use a trademark symbol without the hassle of registration. I hope you can shed some light on this perplexing topic. I need to go to law school!

A: Copyright protects the exact expression of ideas, but not the underlying facts or concepts. Trademark can protect underlying concepts and ideas if they identify the source of a product or service and help distinguish it from others in the minds of consumers. Trademark law really offers two kinds of protection – it protects consumers from being confused or misled about the source of products and services and it protects businesses from having the value invested in their brand and reputation from being ripped off by competitors. A good example from the field of publishing is the Dummies series. Consumers know what to expect when they buy a Dummies book and because the concept is trademarked, the publisher has a right to keep others from stealing readers by using a title that appends the words “For Dummies” to a subject.

Generally, you can’t get trademark protection for individual titles, but you can protect the overall concept of your series of books and speaking programs because the trademark tells consumers who you are and what you offer that is different from the offerings of other speakers and authors. Trademark protection might be possible for an individual title if it develops something lawyers call “secondary meaning” by becoming so closely identified with a particular work or author that readers have come to associate the title with a particular work. Gone With the Wind is an example of a title that has acquired secondary meaning.

From the description of your idea for a series of books and related programs, it sounds like your concept would qualify for trademark protection. It is permissible to use the TM symbol with any mark, even if it is unregistered. The R in a circle symbol, however, cannot be used unless the mark has be registered by the Patent and Trademark Office. While it’s possible to handle trademark registration yourself, it’s a much more complex process than copyright registration and there are numerous ways to get into trouble along the way. I routinely advise clients to save money by registering their own copyrights, but I almost always advise that trademark registrations be handled by an experienced intellectual property attorney.


Does an editor have a copyright in my article?

December 8, 2014

Tags: Author Law, Writing, Sallie Randolph, Authorlaw, Copyright, Publishing, Books, Contracts, Collaboration Agreement, IP Law, Intellectual Property, Copyright Registration, Copyright Office, Form GR, Form TX, Editing

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: I sent an article query to a major woman’s magazine. To make a very long story a little shorter, the editor liked the idea, then convinced me to turn it into a personal essay, and she added some good stuff to it. But it took so long for it to get anywhere at the magazine that after, a couple months I sent it to a news magazine. The first magazine had it for about five months when the second called and said they wanted it. I told the second editor about the first magazine and said I'd have to see and get back to her. I informed the first editor that another publication wanted it. I told her that I was happy to have her magazine publish it, but I'd need to know this week. She acted quite outraged and hinted that because she gave me the idea for my essay she somehow co-owns the copyright. Is she being ridiculous? I hope so.

A: She is wrong! The editorial process does not give the editor an ownership stake in the copyright or the right to sue for infringement. A joint copyright must be intended from the beginning. This is still your work. She had ample time to push your essay through the editorial decision making process and she took too long. You had every right to submit your work elsewhere, even if it included her editorial enhancements.

To be on the safe side, though, you should register your copyright in the published version as soon as it comes out. If you have other published articles from this year to register at the same time, you can register all your articles for the same fee. When registering multiple published articles you use a form GR in addition to Form TX. It’s not difficult, but registration of published articles from periodicals can’t be done on line. http://www.copyright.gov/forms/formgr_tx.pdf. The effort is well worth it.

And speaking of registering your copyright:

Q: I have heard about a “poor man’s copyright” where you seal your manuscript in an envelope and mail it to yourself. Is this a way for writers to protect themselves?

A: That is a common myth. Real protection comes from registering your copyright, which is a fairly straightforward procedure. The United States Copyright Office has a wealth of information about how to get this done. http://www.copyright.gov. All authors should get to know this invaluable site.



When the publisher doesn't pay

December 2, 2014

Tags: Author Law, Writing, Sallie Randolph, Authorlaw, Copyright, Publishing, Books, Contracts, Contract Termination, Collaboration Agreement, Writing, IP Law, Intellectual Property, Collecting Overdue Fees, Small Claims Court

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: A magazine owes me several thousand dollars and hasn't paid. I'm afraid that the publisher is experiencing major money problems. Do you think I should sue for my money? Can I go to small claims court?

A: A lawsuit is certainly one way to get your money, although I would advise it only after you have exhausted your other options, such as requesting intervention from a writers organization. When all else fails, though, litigation is something to consider. Sometimes the credible threat of a lawsuit will precipitate payment. Often the actual filing of a suit brings about a settlement. Sometimes a trial must be held. If you are going to threaten litigation, though, you should be prepared to go ahead. If you aren't ready, willing and able to sue, don't threaten. This means that you should carefully evaluate the potential for litigation at the first sign of trouble. Your collection strategy will be dictated in part by this evaluation.

Whether or not small claims court is practical for you depends on a variety of circumstances such as exactly how much you are owed, where the magazine is located and where you live, how strongly you feel about the situation, and how much time and effort you are willing to invest. Small claims courts are state courts and the rules vary from state to state. In most small claims courts there is a ceiling, called the jurisdictional limit, on how much can be recovered. The figure varies widely from state to state.

Most states require a small claim to be filed in the jurisdiction where the defendant is located. In New York, the suit must be filed in the same county, city or township where the defendant has a postal address. This means that if you live on the West Coast and wish to sue a Manhattan-based magazine, you'll have to file your suit in the small claims court in New York County, which is a division of the Civil Court of the City of New York. You can have someone file on your behalf, but you'll eventually have to appear in court yourself. So, if you live near New York and can appear in court easily, small claims court can be an effective way to get your money from a New York publisher. But if you live far away from the publisher or are owed more than the jurisdictional limit, then it's a much less practical option.

Something else to keep in mind is that even if you win a judgment, in small claims court or another court, you still have to collect it. If the magazine is, as you suspect, tottering on the brink of insolvency, winning in court may not get you any of those dollars you are owed.

Using trademarks in fiction.

November 24, 2014

Tags: Trademarks, Author Law, Writing, Sallie Randolph, Authorlaw, Copyright, Publishing, Books, Contracts, Contract Termination, Collaboration Agreement, Writing, IP Law, Intellectual Property

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: I am writing a novel and was told by an editor that I must remove the words “Ford,” “Greyhound,” “Chrysler,” etc. or be prepared to fork out royalties. I've never been told this before, and don't know what to do. I've researched trade name law but can't find anything pertaining to this in particular. If I'm using say, “Ford,” for example, as simply stating what it is my character drives, (i.e. Ford pick-up, etc.) does this pose legitimacy to said editor's advice? Any information you can share is most sincerely appreciated.

A: This editor is way off base. Of course you can write about trademarked products in your fiction. What the trademark protection prevents you from doing is marketing your own automobile under the brand name of another or using the trademark in commerce or advertising without identifying it as a registered trademark. Your proposed use is legally acceptable and the editor is incorrect. Which leads me to ask just how credible this editor is about publishing issues. Is this someone you plan to do business with? If so, please be careful.

One point to consider -- most of the time when you write about something that has trademark protection you should capitalize. That's courteous and correct. You do not need to use a trademark symbol in editorial copy.

Termination of contract because of breach

November 17, 2014

Tags: Breach of contract, Author Law, Sallie Randolph, Authorlaw, Copyright, Publishing, Books, Contracts, Contract Termination, Collaboration Agreement, Writing, IP Law, Intellectual Property

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: My publisher has violated our contract in several ways. The most serious problem is that royalty payments are always late. On two different occasions, the payments were not enough and I had to raise a fuss in order to get what was owed me. The publisher is not marketing the book as aggressively as he could. Is there any way I can get out of this contract?

A: The first step is to consider diplomatic action. Talk to your agent if you have one. She should be able to apply pressure to the publisher.

If you seek a legal solution, you should be aware that the publisher must usually fall far short of its contractual obligations before the author can terminate or rescind the contract. A court will generally permit termination only in the event that the licensee has committed a material breach of the publishing agreement. Courts define a material breach as a breach of so substantial a nature that it “affects the very essence of the contract and serves to defeat the object of the parties.” The breach must, in fact, constitute “a total failure in the performance of the contract.” This is a high standard.

In various cases, courts have applied the above test and concluded that delays in royalty payments and certain short falls in amounts paid do not amount to a material breach. However, while a publishing agreement can rarely be terminated entirely, there are circumstances when the high standard for a material breach does not apply. Furthermore, even though you are might not be entitled to terminate the contract, you may be entitled to damages for the publisher’s breach. Accordingly, it is best to consult a knowledgeable attorney who can review your contract and the facts of your case.

The trouble with "standard" contracts

November 10, 2014

Tags: Author Law, Sallie Randolph, Authorlaw, Copyright, Publishing, Books, Contracts, Collaboration Agreement, Writing, IP Law, Intellectual Property

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: Do you have a standard collaboration agreement for me to use? I’m going to be ghostwriting a book for a well-known doctor.

A: I am often asked to provide a “standard” contract for one purpose or another. Sometimes I’m asked to look over a particular clause and ask how it can be adjusted to suit the writer’s needs. My reply in these cases is the same – there’s no such thing as a standard contract. Each contract is an agreement between two parties that is enforceable by a court and it’s essential that it reflect the reality of the relationship between those parties.

Any contract must be evaluated as a unified whole. It’s a dangerous practice to tinker with one part of a contract without making sure that other parts aren’t affected or that other parts don’t contradict the changed clause. For this reason, I always insist on seeing the entire contract before commenting on any part of it.

As to the adaptation of a “standard” contract to an individual situation, I am reluctant to recommend this practice to writers, especially with collaboration agreements that present particularly challenging legal complexities. In my experience, collaboration agreements can cause more problems than any other type of publishing contract. They should be carefully drafted so that they reflect the true intentions of the parties and use legally correct language. Legally correct language is especially important in the area of copyright ownership and transfer, an issue that often comes up in collaborative projects.

There’s nothing wrong with saving effort and money by starting out with a form agreement or attempting to adapt someone else’s contract. But it would be a smart investment to have your final draft reviewed by a capable attorney before signing it. A modest legal fee upfront beats paying large fees later to untangle the mess that a do-it-yourself-contract can create.

To paraphrase an old saying: “The writer who acts as her own lawyer has a fool for a client.”

Welcome to Ask Author Law

November 3, 2014

Tags: Author Law, Sallie Randolph, Authorlaw, Copyright, Publishing, Books, Contracts, Collaboration, Writing, IP Law, Intellectual Property

Ask Author Law is a Q&A blog about legal issues for authors. I am a practicing attorney, freelance writer, and publishing consultant. I focus my law practice on the representation of authors, often consulting with or serving as co-counsel to other attorneys on publishing cases. This information is for general purposes only and is not legal advice. Asking a question or reading an answer does not create an attorney-client relationship.

Q: I’ve just been offered my first book contract from a small independent publisher. I didn’t use an agent and I really want this deal, so I plan to go ahead and sign the contract, even though it’s not perfect. I don’t want to spook the editor by asking questions or making waves. A friend of mine said that if I don’t have an agent I should have a lawyer check the contract over, but I don’t want to pay a lawyer to raise unnecessary questions. No offense, but my experience is that lawyers just make things overly complicated. And they charge an arm and a leg to muck things up.

A: First of all, any legitimate publisher is not going to be offended by reasonable questions about a contract and no good attorney is going to be offended by your concerns about the way the attorney will approach a contract review or by a request to keep fees reasonable. That said, I do understand that you might be uncomfortable raising contract questions, especially if there’s nothing seriously wrong with the contract. But there’s no reason you can’t ask an attorney to do a quick review, look for any serious problems and, should any important questions arise, make suggestions as to an appropriate way to raise them with the publisher. The charge shouldn’t be unreasonable for a simple consultation (but ask the lawyer to quote a fee first).

You may also be more comfortable just asking an attorney to handle all the negotiations on your behalf. If you tell the attorney you don’t want to stir up any unnecessary trouble, the attorney should be able to step in and spare you the agony of negotiation. The fee might be a little higher for such extended involvement, but it can free you and the editor to concentrate on producing a good book while someone else handles the legal details. Many publishers actually prefer to deal with lawyers or agents. Also, having an attorney handle the negotiation for you is a way to communicate your status as a serious professional writer.

If you really don’t have the resources to pay an attorney, or if you can’t find an experienced publishing attorney to help you, you should be aware that the Authors Guild (www.authorsguild.org) provides a free legal evaluation of any book contract to its members. Your contract review will be competent and very thorough. The Authors Guild will only provide you with advice, though. They won’t represent you in a negotiation. And the turn around time is sometimes longer than busy writers are willing to wait. But the Guild legal program is an invaluable resource to keep in mind.