Ask Author Law

Does my catchy title present a trademark problem?

September 23, 2015

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

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. Readers are reminded that this information is for general information only and that any specific legal problems should be discussed with an attorney. Questions are presented anonymously, with the askerís privacy protected. Some are composites based on issues I have been asked about in the past. Some were asked at workshops and conferences where I have presented. If you have a question for this blog, leave a comment below or send it to Authorlaw@yahoo.com. Your question may be edited or combined with others. I cannot answer questions privately and not all questions can be used, but Iíll try to give full coverage to the matters that writers care about most. Ask Author Law is published for information only. Answers are not legal advice. Asking and/or answering a question does not create a lawyer/client relationship. The solutions to legal problems depend entirely on the specifics of the situation, so any writer in need of legal advice should consult privately with a qualified attorney.

Q: I'm writing a book with a catchy, appropriate title and just discovered that an organization in another state uses the exact same words as the name of their ongoing workshop. In their promo literature they have a tiny "sm" (service mark) next to their name. Am I out of luck? Does this mean I now have to come up with a new title or ask this organization to give me permission to use their workshop program name as the title of my book?

A: This is one of those questions to which the answer is a resounding ďit depends.Ē There are many factors to consider as you decide what to do. The answer depends on whether those looking at the book would assume sponsorship by, endorsement of, or affiliation with the organization. You should ask yourself whether people buying your book might assume that you represent or support the organization and its point of view. If the answer is yes, then you should probably find another title or get the organizationís permission to use the title. Another possibility is to use the title with a disclaimer that says your book is not associated in any way with the organization.

If your book is going to receive nationwide distribution and the subject is similar to the subject of the organizationís workshop, there could very well be a potential problem of trademark infringement and you would probably be wise to change the title. If your book, however, covers a different topic from the organizationís workshop or the organization operates in only a small geographical area and isnít widely known outside of its home turf, then you might not have a problem. In that case you would be wise to ask an attorney to have a trademark search performed. Such a search will identify whether the organization has taken steps to register its service mark at the federal level for workshops or services that might be similar to the topic of your book. If it has taken such steps, youíll probably decide to change the title in order to avoid a potential trademark infringement problem.

A third factor to consider is how common and generic your proposed title is. If itís distinctive and closely associated with the organization, you should probably not use it. If itís based on a common phrase and accurately describes your bookís content, itís less likely to be a problem. If you really want to use this title and youíre not confident about the potential implications, you might want to confer with a trademark attorney. (more…)

Book Rights to License or Keep

September 12, 2015

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

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. Readers are reminded that this information is for general information only and that any specific legal problems should be discussed with an attorney. Questions are presented anonymously, with the askerís privacy protected. Some are composites based on issues I have been asked about in the past. Some were asked at workshops and conferences where I have presented. If you have a question for this blog, send it to authorlaw@yahoo.com. Your question may be edited or combined with others. I cannot answer questions privately and not all questions can be used, but Iíll try to give full coverage to the matters that writers care about most. Ask Author Law is published for information only. Answers are not legal advice. Asking and/or answering a question does not create a lawyer/client relationship. The solutions to legal problems depend entirely on the specifics of the situation, so any writer in need of legal advice should consult privately with a qualified attorney.

Q: How do I decide what rights to grant to a book publisher and what rights to hang on to?

A: ďVery carefullyĒ is the tempting flip answer, but seriously, there isnít really a standard response. If you have an agent, the agent will probably have you retain more rights that you will probably want to keep if youíre negotiating your own contract. In general, a trade publisher will expect, at a very minimum, the primary rights to include exclusive hardcover book publication rights in the English language in North America. The publisher may reasonably expect other exclusive primary rights as well, especially trade paperback and very possibly mass market paperback rights. The publisher will also rightfully expect certain exclusive subsidiary rights, particularly book club rights. The publisher should NOT reasonably expect to get the copyright, so be alert for any unfairly inclusive language such as all rights, work made for hire, or assignment of a copyright.

While primary rights are almost always exclusive (meaning only the publisher can legally exploit them), subsidiary rights can be exclusive or non-exclusive. Which rights you license to the publisher and which ones you retain are best determined by considering who is in the best position to exploit the rights on your behalf and the proposed rate of compensation. If the publisher is likely to market movie rights aggressively, for example, and you donít have any way to reach Hollywood markets yourself, itís probably best to allow the publisher to act as your agent. If you plan to engage an entertainment agent, you may prefer to retain those rights.

Another factor in your decision will be the proposed split of income between you and the publisher. A 50/50 split for book club rights is traditional, but with most other subsidiary rights (subsidiary rights are, by definition, all rights that arenít primary, and vary from contract to contract), the publisher is really functioning as an agent, so the split should reflect that approach. You might have to pay an agency commission of 25% for the marketing of foreign rights, for example, so a 25/75 split is probably appropriate. Itís been my experience, though, that many publishers expect an unrealistic ďcommissionĒ for the exploitation of subsidiary rights, sometimes approaching 95% for certain electronic rights. Such a lopsided split is not really fair.

Although I donít like to generalize about contracts, a good practice would be to try to retain as many rights as you can unless you really think itís to your advantage to let the publisher have them. When negotiating, itís often useful to ask the publisher what rights it really needs. The publisherís boilerplate list of subsidiary rights can be usually be pared down and/or the split improved if you take this approach. (more…)