Ask Author Law

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.”

Do I really need a lawyer for a simple book contract?

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.