Author Law Attorney Sallie Randolph 

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 wrote two young adult fiction books years ago (in the early eighties) for a flat fee on a work made for hire basis. These two books are long out of print and the publisher is out of business. I have two problems. First, how can I get the rights to these two books back? And second, the contract I signed called for me to write a total of six books under the same terms. The contract also said they were to be my “next” six books. If publisher is out of business can I forget about the other four books? The first publisher was bought out by another publisher and that second publisher has faded from the scene.

A: Let’s talk about your second question first. Since the publisher is no longer in business and never asked you to produce the last four contract books while it was still publishing, it is not possible for you to “perform” on the contract. So this particular contract clause is not enforceable and I wouldn’t worry about it. Even if the first publisher were still in business, if years have gone by without the publisher requesting you to write the next books a court would be reluctant to enforce a contract that unreasonably restrains your right to ply your trade.

As to getting the rights back to your first two books, I would need to examine the contract for “belt and suspenders” language in the work made for hire clause. A contract that simply says the work is considered as a work made for hire is probably not valid. That’s because books (except textbooks) are not among the specific categories qualified as work made for hire under the copyright law as it was substantially revamped effective in 1978. If, on the other hand, the contract says something like “in the event that the Work is ever held not to be a work made for hire, the Author hereby agrees to assign the copyright to the Publisher,” then the original publisher may indeed be the copyright owner. Assuming a lack of belt and suspenders language, the work made for hire language is not valid because your book isn’t a covered category under the law. The next question is if the contract didn’t convey the entire copyright to the publisher, what rights did the publisher acquire? Lawyers don’t agree on this and there are no definitive cases to guide us, so the best we can do is make an educated guess. My guess is that a court called upon to interpret such a contract would construe it in a light least favorable to the publisher and would say that the publisher acquired the right to publish the book, period. Once the book is out of print and the publisher defunct, the rights would naturally revert to the author.

Very often the legal implications of a decision are something of a gamble based on an analysis of the risk. In this case, your risk is pretty low. The publisher who might try to enforce any rights under that contract is long gone, and, even if someone unearthed that old contract and tried to hold you to it, I doubt that the courts could enforce it. So I’d say that you are reasonably safe. The only potential problem I can see is if you try to license those two old books to a new publisher, you might be asked to warrant that the rights are clear. If you decide to try to get those books published, you would be wise to run your new contract past an attorney. In fact, you’d be wise to run any book contract past an attorney or agent.  Read More 

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 host a local radio show and I'm wondering if the interviews I do of guests on my shows are owned by me, to reproduce, or if I need to get permission when I want to use part of that interview in a written piece?

A: Just like you own a copyright in your own words from the moment they are “fixed in a tangible medium of expression” your guests own the copyright in their words when the show is recorded, which constitutes fixation. So the answer to your question is that the guests’ comments are owned by them, not by you, and the normal permission requirements would apply.

A good practice would be to get every guest to sign a consent form before the show, giving you permission to reproduce copies of the broadcast and to use the interviews for other projects. (It’s even possible that your station already has consent forms signed by guests). If you use phone interviews, obtaining written consent is less practical but you could make it a practice to ask for consent and record it prior to the interview. Verbal consent is a defense to copyright infringement, but the problem is proving that you had the consent. A recording where you explain your intended uses of the material and get consent would provide proof.

When you want to use material from your archive and you don’t have proof of consent, then you should follow the same procedures for use of the material that you would if you wanted to use someone else’s written material. Some of your proposed uses could be brief quotations that might constitute fair use. Or you might paraphrase and attribute as an indirect quote. Other uses would require consent. If so, you should contact the interviewee and ask for permission. If you get verbal permission, be sure to make notes of your conversation or record it.

You may be wondering why you didn’t need to get consent for the original interview. That is because by participating in the interview the guest is giving you implied consent to broadcast and record the interview. That implied consent would probably also apply to rebroadcasts and other radio uses of the interview but wouldn’t cover use in written pieces.
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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 wrote a nonfiction book on family finance in which I urged consumers to use humor to deal with financial stress. One of my suggestions is to sing in the shower using made up lyrics to popular songs. I gave three examples in my book by including the lyrics I wrote along with a suggestion that the lyrics be sung to the tune of such and such a song. Now my publisher is going to put out an audio version of the book and I’m going to be doing the reading. Can I sing the three sample songs in my book or should I read them in a regular voice?

A: The legal answer is that you probably have a right to perform your songs without the permission of the copyright owners. The practical answer is that you would most likely have to defend yourself in a lawsuit if you exercise that right.

The prudent thing would be to read the text directly from the book without breaking into song, even though parody is a covered exception to copyright infringement as a fair use. In fact, there is a supreme court case involving a recording by the rap group 2 Live Crew of the hit Roy Orbison song “Pretty Woman,” morphed by the rappers into “Hairy Woman,” The court held that even the recording of most of the words and all of the melody is permissible as parody. So you would certainly have a fair use defense to your use of the three song parodies in your audio book.

The practical problem is that music copyright owners are both vigilant and litigious and you risk being sued. Even though you would have, in my opinion, an excellent defense, you would probably have to pay some very high legal fees to win your case. The result would be that you’d likely lose more money winning than it would be worth.

If you have your heart set on performing the songs, you could always try to obtain permission to use them. You’ll most likely be asked for a licensing fee. For information on how to obtain such licenses contact the performing rights societies ASCAP, BMI, and the Harry Fox Agency. All have helpful web sites.  Read More 

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 group of other writers and I were having a discussion about rewriting and selling stories if you had sold all rights to previous versions. To what extent must you rewrite to avoid copyright infringement? I have looked and asked in vain for a definitive answer -- or even an authoritative and marginally helpful one. Are you familiar with any relevant statutes or case law? I do understand that in one case copyright infringement occurred on the basis of just two distinctive words.

A: The reason you’ve had trouble finding a “definitive answer” is that one doesn’t exist. This is another question to which the answer is “it depends.” It depends, in large part, on whether the particular all rights contract you signed had the effect of transferring the copyright to the publisher. That could have happened in a work made for hire agreement or in an all rights agreement that specifically assigns the copyright.

Absent a clear assignment of copyright, an all rights contract still leaves you as the author and owner of the underlying copyright. True, that underlying copyright is a mere shell of its former self, but it does leave you with the right to create a derivative work, a work “based on” the original. When you have the right to create a work based on the original you can revise fairly lightly and probably be OK, although it would still be wise to make your revisions as extensive as possible.

If, on the other hand, you did convey the copyright to the publisher, then you have only the same fair use rights as anyone else. To make fair use of your own work, you can quote briefly from it and go back to and quote from the same sources, but you should write the rest of the article from scratch.

To avoid this problem altogether, you should avoid signing all rights or WMFH contracts at all. You can tell the publisher who proffers one that you’ll be happy to license the rights the publisher reasonably needs at a fair price, but that all rights aren’t available. If it’s too late because you already signed all the rights away, you can still avoid a problem by getting the publisher’s permission to license reprints. If the publisher doesn’t care, you’ll probably get permission. Consent is a complete defense to copyright infringement, so you change as little or as much as you wish. Even verbal consent is OK, although it would be better to follow up on the verbal consent with a letter thanking the publisher for giving you permission and still better to send the publisher two copies of a letter agreement that asks the publisher to acknowledge the consent by signing and sending back to you. In this case, enclose as SASE to make it as easy as possible for the publisher to do what you want her to do. If you intend to rely on the verbal consent, make a note of the name of the person you talked to, the date, the time, the number called, and the gist of the conversation. Keep those notes in your records. If it’s legal to tape a phone conversation in your state, do that too.

You should also consider the ethical implications of your question. Some methods of recycling an article may be completely legal but ethically ambiguous. If you have doubts, getting permission is probably the best method.  Read More 

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 local real estate broker hired me to write some columns under his name for a weekly newspaper. He was supposed to pay me $300 per column, on delivery. He was going to get the byline and own the copyright, but it was a ghostwriting job and he supplied the subject and the expertise, so those terms were acceptable to me. I did one column and delivered it. He paid me $300 and said he liked it. I did two more columns. He paid another $600 and asked me to finish as many as I could so he’d have a stock of columns all ready to go. I finished and delivered another seven columns and sent him an invoice for $2,100. I’m not sure what happened between him and the local paper, but the column didn’t appear when he had told me it would. He didn’t pay the invoice. I sent a second invoice, which he also ignored. I tried to call his office, but he didn’t return my calls. During this period I got several other assignments, so I moved on and didn’t follow up further with him. A few weeks went by and then, to my absolute shock, I received a computerized form notice from the municipal court that I was being sued for $1,000 by the broker. I tried to call the broker again, but he still didn’t return my calls. I’m totally outraged and have absolutely no intention of paying him any money. He doesn’t return my calls. I’m tempted just to throw this notice away. He can’t prove anything against me, so why should I let him get away with this? What do you think?

A: I share your outrage, but you can’t just ignore this. It’s an absolutely awful feeling to be the defendant in a legal action. You’re put in a position over which you have very little control. You have to show up on someone else’s timetable and answer to allegations that someone else has made. It’s especially awful when the allegations against you are without basis, as these seem to be. If you are like most of my clients who have been sued, you’re furious, upset, and afraid. This is completely understandable, and I sympathize. But you still need to deal with it.

You didn’t identify the state where you live, but it sounds like you’re being sued in a small claims court. The following suggestions are based on that assumption. If you have any reason to believe that the notice you’ve received is NOT a small claims summons, you should consult a lawyer promptly. If it’s definitely a small claims case, you can defer your decision on whether to get a lawyer until farther along in the process.

I’ve found that defendants who survive the best are the ones who manage to channel their anger productively, detach as much as possible, and prepare for their defense methodically. I know this is easier said than done, but you should try your best to follow a process in which you verify the basics, gather information, then make and follow a plan, while remaining flexible and able to adapt to the various curve balls that may come your way. You’ll do best and you’ll feel less helpless if you take a proactive stance, rather than an emotional, reactive one. Here’s where being a writer can be a major advantage. See if you can treat this as a writing project and bring your professional skills to bear. Even if you never write about this experience, a journalistic approach can help you get through it.

The first step is to verify the basics. Small claims courts are state courts, so the rules, procedures and applicable law can vary considerably from jurisdiction to jurisdiction. It’s not unusual for these courts to use a computerized summons served by mail. That’s the case in New York, where I practice. Examine the notice you received. Make sure it’s really from a court. Some collection agencies and lawyers send letters threatening legal action that resemble court documents.

At a minimum, it should give you instructions on when and where you should appear and some idea of what you’re being sued for. Any court dates or deadlines important here. Then you should check with the court to make sure you understand what is expected of you next. Many courts discourage telephone contact or use frustrating voice mail, but you should persevere. Often the best approach is to visit the court in person -- both to confirm the basics on your notice and, perhaps more important, to get a sense of the place and what happens there. If there is a session scheduled before your court date, attend as an observer. Sit up front where you can see and hear what’s going on.  Read More 

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.

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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.
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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.
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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.

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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.
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