Ask The Experts – Publishing Law

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Topics Discussed Below Include:
Legal Ramifications for Illegal Content Written in a Memoir
Ownership of rights for 1930s Newspaper Stories
Work for Hire Contract with Designer
Legal Issues with Referencing Family Members
Insurance Policy help for Authors/Publishers
Legality of Using SAT Questions in an eBook
Need of an LOC to Publish in the United States
Copyright Date Precedence and Renewal
Defamation and Whether to Publish a Book
Legality of Using Candid Photos Without Model Release
“Based on a True Story” vs. “Inspired By a True Story” / Product Liability
Legal protection In Publishing a Fictionalized Story Loosely Based on Real Events
Negotiating Re-print Lyrics in Books
Necessity of a Release Form with a Recognizable Item in a Photo
Assistance with Endnotes
Small Publisher/Author Rights During Contract Termination
Employer/Employee Copyright of Writing
Permitted Use and Expiration of an Image
Writer’s Liability Insurance and Quoting
Using Quotes from the New York Times in the 1960s
Registering a Trademark on a Budget
Copyright Laws for Selling a CD of Website URLs
Author Publishing Contracts – Deductions From Gross Revenue to Get Net
Need to Get Publishing Insurance
Publishing Contract Text Clarification
Avoiding Liability Issues
Citations for Similar Book Content and Seminars
Agreement Language Concerning Book Changes
eBook Contract Language with Authors
Legality of Trademarked Names in the Quote of a Book
Copyright Page Disclaimer Help
Recommendations for Clipart in a Printed Book

Question:

Hello I am working with a client who has asked me to co-write his memoir which has explicit, under-age sexual content, and illegal activities such as drug deals, gang membership, and other criminal activity. It is an interesting story but, if I bid on the job, I am concerned about any legal ramifications or other repercussions that would result from being linked with this type of content. Please advise me of publishing (or other) laws which regulate these types of books. Thank you.

Answer (12/2013):

In answer to your question, the writer is not likely to have exposure to suit based simply on what he/she writes. In the US at least, the First Amendment provides broad protection to both individuals and the media to speak/write whatever they choose, subject to some fairly well circumscribed exceptions. The writer would, for example, still be exposed to suit if he/she negligently wrote something that turned out to be untrue and defamatory, or if in the process of gathering information for the book participated in an invasion of a subject’s right to privacy (through intrusion into seclusion, publication of private facts, or false light). That said, if the book ends up being sold in Canada or the UK, the shelter otherwise provided by our First Amendment would be unavailing. This sort of exposure can be managed by careful pre-publication vetting of the manuscript and by media perils insurance.

Apart from the publishing issues raised by the circumstances described, there is the potential at least for the writer to be drawn into investigations of the conduct of his/her client. This is a bit outside my core competencies and he/she might be well advised to consult with a criminal defense attorney about the potential for being subpoenaed for interview or testimony in a criminal proceeding or trial. Writing about a crime does not make one a criminal, but it might make one a witness.

Vis a vis the client, it would probably be a good idea to have a written contract governing the terms of the engagement and, among other things typically addressed in such contract, assigning responsibility for the cost of any claims or defense of any subpoenas. This sort of protection is, of course, only as good as the client’s pockets are deep.

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him atsgillen@whepatent.com or 513/241-2324.


Question:

I would like to publish a collection of stories that were serialized in newspapers in the 1930’s. Must I get permission from the company that carries the modified name of the original newspaper?

The original newspaper was sold to a family member and now is online only. The newspaper is named after the original. I cannot not find archival information on its site and there is no mention of old materials and rights. The difference in the name is the word ‘new’ in front – as in ‘The New Washington Post’.

The author wrote under a pseudonym, has no remaining family and died in the 1970’s. These same stories were pieced together by two authors ten years ago and published by a university press.

So I guess the real question is: Who owns published material from seventy-year-old newspaper stories?

Answer (11/2013):

I have information, but not an answer. It isn’t possible to answer the question posed in the abstract.

What I can say is that it is possible for works first published in the 1930’s to still be under copyright protection in the US. The cutoff date is presently 1923 — i.e., any work first published prior to 1923 must necessarily be in the public domain now. Later published works may still be protected, but we can only know the answer for any given work by doing a copyright title search on the specific work or works at issue, and even then the answer may be unclear. Here, it is also possible that the two authors who published the collection ten years ago have a separate copyright in their collection as a collective work – whether they do would be driven by the nature of the collection and whether there was some element of authorship in the selection and arrangement of the articles they included. This, too, can’t be answered in the abstract without reference to the specific works at issue and some information about how and why they were selected for inclusion, what they were selected from, and how their arrangement and presentation was determined. (Though, a search of the online records of the US Copyright Office would tell us whether the two authors or their university press have registered a claim to copyrights in their collection.)

As a practical matter, it may be the case that if the individual articles are still under a subsisting copyright, or if the collection is covered by a collective-work copyright, that the owners of those rights don’t realize they own them or don’t care to police them. We just can’t know for certain in the absence of more details.

For more information on the challenges of tracking down ownership of “orphan” works, see my article in the July 2013 issue of The Independent: http://www.ibpa-online.org/article/when-getting-rights-clearance-is-tough/

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him atsgillen@whepatent.com or 513/241-2324.


Question:

For a book that my small company is publishing, I am about to hire a designer to create a model page design and then lay out the interior of the book. I have read that I should execute a work for hire agreement with the designer for this kind of work. Is that necessary, and is that kind of design work really covered by work-for-hire law? Could you please suggest appropriate wording or, if possible, even provide a complete sample work-for-hire contract? Thank you.

Answer (10/2013):

I work on both sides of this issue: as a publisher hiring designers, and as a designer freelancing for other publishers. For page design/layout it should be obvious to both parties that the end product belongs to the publisher. A lengthy, or even short contract is probably unnecessary. However, when finalizing a payment and/or start work agreement, a brief statement provided by the publisher to the designer could state: “It is acknowledged by both ___________(publisher) and __________ (designer) that all work on the book titled “_______” is being done on a work-for-hire basis and the copyright shall be held by _______.” This could be in an email. If the designer has a problem with that statement, you might consider looking for another designer.

That being said, I have found an excellent sample Work-For-Hire contract that would cover any potential issues that may arise. This is more suitable for hiring a cover designer, where artwork is a more important concern. The link is: http://www.patentek.com/CM/ResourceLinks/ResourceLinks90.asp

~ Julie Murkette has been a publishing professional for more than 20 years with extensive experience in the entire book publishing process including acquisitions, editing, design, printing, marketing and distribution. Consultant to self-publishing authors and independent publishers since 1994. Founder/Publisher Womanchild Press (1976-1981); Publisher, Satya House Publications (2007 – present).


Question:

I understand that in writing either fiction or non-fiction, if writing about someone still alive, the reference needs to be blurred enough that only the person referred and one more person will recognize who it is.

My question is, if I am writing about siblings plural, if I write about them as a group and mention something that happened when we were children, if it is not specific which sibling I am writing about, can any of them still sue me?

Answer (10/2013):

Revealing skeletons in your family’s closet, can implicate three or more legal issues. When writing about family members (and other small groups), it’s easy to make a connection between a defamatory statement and any one of a number of unnamed family (or group) members. Yes, small group members, including family members, can sue. Keep in mind that to be actionable, a defamatory statement has to false. Another legal issue is disclosure of private, embarrassing facts. While First Amendment and other defenses (e.g., newsworthiness) may apply to certain disclosures, authors and publishers have to be careful when publishing private and embarrassing facts – especially about private figures. A third legal issue is false light, which is often compared to libel. If you create a highly embarrassing impression about a living person by exaggerating facts or circumstances, it can constitute false light invasion of privacy. Like libel, the truth is altered in away that it is no longer accurate. While truth is full defense to libel, it is not a defense to invasion of privacy or false light. Good journalism, an awareness of the law, and writing in such a way that takes advantage of the law’s exceptions, can help reduce the legal risk associated with writing about living, identifiable people.

Disclaimer: This information is not intended as legal advice, as legal advice has to be tailored to the specific circumstances and facts of each situation. Consult an attorney before taking any action based on information contained here. Also, keep in mind that libel, false light and privacy law varies from state to state.

~ Lloyd J. Jassin provides counseling to book publishing, television, theater, new media, arts and entertainment clients on contract, licensing, copyright, trademark, unfair competition, libel, right of privacy and general corporate law matters. His practice includes drafting and negotiating publishing and entertainment industry contracts, intellectual property due diligence, trademark prosecution, dispute resolution and litigation. http://www.copylaw.com.


Question:

I am in the process of signing an agreement with Major League Baseball for permission to use word marks and logos in my self published children’s book. There is a clause requiring many insurance policies however they said “they would work with me on this.” What type of insurance policies do authors / publishers purchase? GL policy? Combination?

I also have an illustration question: there is a picture in our book referring to Garret’s popcorn yet we never mention the name in text or illustrate their name. Our illustrator did create a similar awning and used similar font that says popcorn on the awning. Can we get in trouble for this?

I always appreciate the help and support you give to rookies like us. Thank you.

Answer (09/2013):

Most trademark license agreements, which the question seems to describe, require the “licensee” to obtain and maintain at its own cost some form of insurance.

The type of policy publishers and authors generally purchase are known as media perils or multimedia perils policies. These policies generally cover intellectual property claims, or claims of copyright infringement, trademark infringement, unfair competition, defamation (or libel), invasion of privacy and violation of the right of privacy. What is covered, however, will vary from policy to policy.

If you plan to publish a touch-and-feel children’s book, or a children’s book that has moving parts,or poses some other potential risk to life or limb, the trademark owner will likely require you to obtain product liability insurance. If you are shopping for a media perils policy, check to see if policy covers product liability claims, and if the insurance limits are high enough to satisfy the trademark owner.

The second question, while brief, asks for specific advice. You need to consult with an attorney who can determine whether you impermissibly imply some form endorsement or sponsorship, or have crossed the contested border between fair use and the land of copyright infringement.

~ Lloyd J. Jassin provides counseling to book publishing, television, theater, new media, arts and entertainment clients on contract, licensing, copyright, trademark, unfair competition, libel, right of privacy and general corporate law matters. His practice includes drafting and negotiating publishing and entertainment industry contracts, intellectual property due diligence, trademark prosecution, dispute resolution and litigation. http://www.copylaw.com.


Question:

Please help me with a crucial legal question that could make or break my book/eBook!

I’ve written an exam preparation guide, which I intend to be the first in a series. In the same way that there are SAT exam prep guides written by people who are not associated with the company that creates/administers the SAT, I have no association with the company that makes this exam. I want to use real questions and real answer choices from the real exam in my guide. A large part of its value is related to the “realness” of the sample questions and readers don’t want to see original work in this portion, but real questions. I intend to leave all the answers blank (unanswered), so I’m not creating a “cheat sheet” of sorts, but I do want to reproduce the questions and answer choices. My one question is “What can I do?” The angles on that are:

I most want to reproduce real exam questions verbatim and say “these are real exam questions.” May I?

If I can’t do that, is it because I’m saying “these are real exam questions?” May I use real questions, but never refer to them as real?

If not, is the problem that I can’t reproduce real exam questions at all? May I alter real questions and answer choices so they are no longer the same and print those instead? If so, how different do they have to be?

If I can’t use any real exam questions or any sample questions that are in any way derived from real ones, then what are my options? If I were to write completely original questions and answers, am I still in danger of creating ones that are too similar to the real ones?

What rules do all those SAT guides have to follow when they include sample questions? Are there different rules for different formats (like printed vs. eBook)?

Answer (09/2013):

As a general rule, the contents of a proprietary test such as the SAT, including questions and answers, are subject to copyright protection. For that reason, you cannot reproduce questions and answers in a test preparation book except under the following circumstances.

1. You can use questions and answers if the copyright owner grants you permission to do so. However, it is unlikely that a test publisher will grant these rights to a test prep publisher because they, too, publish their own test prep books.

2. You can assert the right to use limited portions of a copyrighted test under the Fair Use Doctrine. There are multiple tests that are applied by the courts to determine if any particular use is, in fact, fair use. An experienced attorney can evaluate the likelihood of success in relying on the Fair Use Doctrine by comparing the contents of your publication with the test from which you have extracted the questions and answers. However, one of the tests under the Fair Use Doctrine is the “amount and substantiality” of the copyrighted content used without permission, which means that if you copy a lot of questions and answers, you are unlikely to fall within the Fair Use Doctrine. In any event, Fair Use is a defense to a copyright infringement action rather than an affirmative right, and it always involves a certain degree of legal risk.

Another issue is access to test questions. Most testing companies take steps to ensure the confidentiality of their testing material, and you may be at risk if you use unpublished questions and answers in violation of these procedures.

In theory, you can re-write a real test question and answer so that it is sufficiently different from the original that it no longer constitutes an infringement, but this is a time-intensive process and is not a sure-fire solution to the potential infringement claim.

Most of the publishers with whom I work, including test prep publishers, compose their own original questions and answers in a manner that is meant to replicate the experience of the standardized test without actually using test questions.

~ Jonathan Kirsch is the author of thirteen books, including eight books of history and biography, two novels and two books on publishing law. (See below.) He contributed book reviews to the Los Angeles Times for more than 40 years, and now serves as book editor and book columnist for The Jewish Journal. He appears as a guest commentator on NPR affiliates KCRW-FM and KPCC-FM in Southern California, and serves on the adjunct faculty of New York University’s Professional Publishing Program.


Question:

I have an interested author we would like to publish. He is a citizen of Nigeria, and resides there.

Does he have to have an LOC to be published in the US? I know the LOC protects his fiction to some degree; however, I’m not sure if not having one effects us.

Answer (09/2013):

1. The publisher does not need an LOC number to publish in the US.

2. The LOC number has nothing to do with copyright and does not protect the work in any way.

See the info below from the LOC website, which includes a link to copyright information.

Hope this helps!

http://www.loc.gov/publish/pcn/faqs/

How does the Preassigned Control Number (PCN) program relate to Copyright?
There is no relationship between the PCN program and Copyright registration. The principal intention of copyright records is to document the intellectual or creative ownership of a work. The principal intention of the PCN program is to assign Library of Congress Control Numbers (LCCNs) in advance of publication to those titles that the Library may add to its collections. When printed in the book, the LCCN facilitates access to the bibliographic record for that book and thereby expedites book processing by libraries and book dealers who obtain copies of the book.
For more information concerning the Copyright Office, go to
 http://www.copyright.gov/. To search copyright records, go to
 http://www.copyright.gov/records/. The mailing address is:
Library of Congress
Copyright Office
101 Independence Avenue, S.E.
Washington, D.C. 20559
Phone: (202) 707-3000
Email:

Stone Bridge Press president and publisher Peter Goodman is a graduate of Cornell University and lived in Tokyo, Japan, for ten years, where he worked as an editor for English-language publishers Charles E. Tuttle and Kodansha International before returning to the United States in 1985. He has served as in-house editor, ghostwriter, translator, and project manager on over 200 Japan- and Asia-related titles. Peter established Stone Bridge in 1989. He is past president of the Bay Area Independent Publishers Association (formerly MSPA) and a current Board Member of IBPA.


Question:

We are a new member and about to reprint a self-published book that has been out-of-print since the first printing in 1977. Because this was very much a niche book at the time only 1,000 copies were printed.

In the book the copyright notice reads as follows:
Copyright © 1977
By (name of author)
All Rights Reserve.
No part of this book may be reproduced in any form,
by mimeograph or any other means,
without written permission.

Although the copyright in the book reads, 1977, the Certificate of Copyright Registration, which I have seen, states that the, Effective date of Registration was May 31, 1978, and that the, Date and Nation of First Publication, was February 6, 1978. U.S.A. It also correctly states that, the Year in which the Creation of the, Work was Completed was 1977.

Question: Which date takes precedence, the copyright 1977 date printed in the book, or the May 31, 1978, Effective date of Registration on the Certificate of Copyright Registration?

This is important because copyright laws changed January 1, 1978. It is my understanding that before 1978, a holder of a copyright had to renew the copyright every 23 years. A copyright issued on or after January 1, 1978 never has to be renewed.

Believing that the Certificate of Copyright Registration, on which the Effective date of Registration is shown as May 31, 1978 takes priority, the author of the book never, ever renewed the copyright.

This is important because the author of the said book has learned that a university, and others, have, without her permission, and even without contacting her, made all the pages of her book available on line. Since all of the pages of the book are available free on line, there is little reason for anyone to purchase a copy of the book.

Our organization is therefore eager to learn, before we print, if those who are making the book available to the public without the authorization of the author can be made to cease and desist based on, if nothing else, the Certificate of Copyright Registration, on which the Effective date of Registration is shown as May 31, 1978.

Incidentally, two signed, out-of-print copies of the book sold recently on Amazon for $495.00 and $485.00 respectively. I would greatly appreciate any advice.

Answer (08/2013):

The bottom line is that works first published in 1964 or later were all automatically extended for an additional term of 67 years without the need to apply for renewal. So the copyright in this book will be in force until 2044.

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him atsgillen@whepatent.com or 513/241-2324.


Question:

We’ve been given a book to edit that involves a harrowing story about a man who served 87 months in federal prison for a crime he didn’t commit and which never existed.

The author was released in August 2012 and contacted me in February of this year. He had previously published this book himself through Amazon, but after receiving our editorial report, went back to the drawing board to revise and trim, cutting nearly 300 pages. It is a tight, quick 250-page memoir about his experience with justice denied and the American prison ‘industry.’

Recently, a 15-minute documentary was released and won a major film award and the director was asked to make it into a 56-minute documentary for PBS. This book has a huge potential to awaken our country to the corrupt justice system and the prison industry. My concern: the one good lawyer who actually tried to help him ‘died’ in the midst this man’s sentence.

News reports said he had a heart attack, but he was found on top of the author’s files. I am a single parent with a toddler daughter and I am nervous about publishing this book, though I was counseled today that the book was already published, the filmmaker of all people has more at stake, and that my role as a publisher is simply to offer him a service.

What to believe? I believe this book is excellent and could help a lot of people. On the other hand, it’s just me here at my company for the moment…and I want to be safe. Is there anyone who can help guide me here? After one phone call today, I’m feeling in the safe zone and that I really should publish this book for him and our country. I appreciate any thoughts you might have on this issue.

Answer (06/2013):

The legal analysis, reasoning and precedent all sound in defamation law. Defamation provides a financial remedy for people whose reputations have been unjustly harmed. Falsity and truth lie at the heart of defamation law; truth being an absolute defense to libel in the United States. Only a false statement can be defamatory. Because of free speech concerns, and because only a false statement can be defamatory, opinions — which cannot be proven false — are entitled to constitutional protection. If the facts upon which an alternate theory of the circumstances surrounding someone’s death aren’t false, the author’s conjecture or guess about what might have happened is likely immune from a defamation lawsuit. Where it gets tricky is distinguishing between false accusations and protected opinion. If the facts upon which the author’s opinion are incorrect, the author and publisher can be held liable for defamation as a result of publishing false facts. So, if you were to say, “In my opinion Jane is a cheating on her husband and drinks too much, because you observe her coming home in the wee hours of the morning smelling of alcohol, you better make sure she isn’t a bartender at the local Holiday Inn before going to press.

So, keep in mind that you can’t insulate yourself merely by saying it’s “my opinion.” And, if a new edition of the work is to be published, it’s generally considered a new publication, which starts the statute of limitations running again. You can have the book vetted by a media or publishing attorney. You might also consider obtaining publisher’s liability insurance. The takeaway? Publishing is not for sissies. I have enormous respect for small and independent presses. They lay it all on the line with each book they publish. They are my First Amendment heroes.

Standard disclaimers apply. Context is everything. So, this should not be considered legal advice. Also, be aware that defamation law may vary from state. Therefore, this brief overview cannot replace the opinion of an experienced attorney who has read or vetted the manuscript before publication.

Lloyd J. Jassin provides counseling to book publishing, television, theater, new media, arts and entertainment clients on contract, licensing, copyright, trademark, unfair competition, libel, right of privacy and general corporate law matters. His practice includes drafting and negotiating publishing and entertainment industry contracts, intellectual property due diligence, trademark prosecution, dispute resolution and litigation. http://www.copylaw.com


Question:

I am assisting a woman with Alzheimer’s to write a memoir of her time working as a midwife in Canada’s North in the 1970s. For the book cover, I want to use either photos she’s taken or photos that my stepfather took when he worked in the North. That is to say, I will have full authority from the copyright owners of the photos to use them in the book design. But my question to you is: Is it okay to use a photo from the 1960s-1970s, featuring Aboriginal and Inuit families and children, even though there is obviously no model release signed? These photos were candid shots taken by the author and my stepfather when they lived in the North. I know there are rules about using photos with minors in them, but is it okay if the photos are very old and the children are now grown up?

Answer (06/2013):

1. Copyright. The person who takes a photo ordinarily owns the copyright in the photo. If the author took the photos herself, there is no clearance issue. If the photos were taken by her stepfather, then his permission is required as long as the photos remain under copyright.

2. Right of Publicity. The right to use the “name, image or likeness” of another person is called the “right of publicity.” The applicable law varies from state to state, and some states are more restrictive than others. As a general rule, the right of publicity applies only to the use of the name, image or likeness of a person for purposes of advertising, merchandising or product endorsement. By contrast, editorial uses fall outside the right of publicity and generally do not require permission.

However, the use of an image on the cover of a book is potentially problematic because book covers are a form of product packaging and because they are often used in advertisements. For that reason, and as a matter of caution, I usually advise my clients to obtain a right of publicity release from persons who are depicted on the cover or to use a cover that does not raise this issue, e.g., a scenic photograph rather than a group photograph. However, an argument can be made that use of a photograph on the cover of a book does not constitute advertising, merchandising or product endorsement, especially if a suitable disclaimer is printed somewhere on the front or back cover, e.g., “Historical photograph is used for editorial purposes only. No affiliation with or sponsorship by the individuals depicted in the photograph is claimed or suggested.”

3. Invasion of Privacy. Another issue arises if the photographs depict embarrassing private behavior. If, however, the photos were taken in a public place, and no embarrassing behavior is depicted, there should be no privacy issues in using the photos even if children are depicted.

4. Practical Considerations. Since the photographs date back a half-century, and since the book is unlikely to be widely circulated, I would be surprised if any of these issues are asserted. However, these are practical rather than legal considerations, and we could not rule out a legal claim.

~ Jonathan Kirsch is the author of thirteen books, including eight books of history and biography, two novels and two books on publishing law. (See below.) He contributed book reviews to the Los Angeles Times for more than 40 years, and now serves as book editor and book columnist for The Jewish Journal. He appears as a guest commentator on NPR affiliates KCRW-FM and KPCC-FM in Southern California, and serves on the adjunct faculty of New York University’s Professional Publishing Program.


Question:

1) In a publication, what is the difference between saying “based on a true story” versus “inspired by a true story” and are there legal implications that could arise from either choice of words?

(For our purposes, the “true story” language is going to be used in a Children’s Picture book about an animal. The book is about a real animal, containing some facts about the animal’s life, but the animal is anthropomorphized).

2) Do I need liability insurance for my fiction book that I am publishing that references children chewing and swallowing gum?

Answer (06/2013):

1) No difference of any legal consequence between “based on” and “inspired by.” Each of them suggests that there is a core of truth to the story but that you are embellishing or going beyond the factual record. This is something we call “faction,” a conflation of fact and fiction and it can under some circumstances give rise to libel claims, but not if the story is about animals. (See the two-part series about libel and defamation in the IBPA Independent).

2) It is not likely under US law that you would be successfully sued on a products liability or negligence theory for some account in a work of fiction, regardless of how reckless the behavior depicted. But there are many other reasons to carry media perils insurance, so ruling out one possible type of claim does not mean that your project is risk free.

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324.


Question:

I would like to publish a fictionalized account of a person finding their way back to their family after a traumatic experience caring for a parent with a terminal illness. My story is told in the first person and builds on situations that actually happened in real life, but details have been added to make it more exciting and stressful. All of the names of family members have been changed, and places and details as well. I have one family member who does not want this story told however. What are the steps I can take to protect myself from a lawsuit but still publish this fictionalized version of the story based loosely on events that happened to my family?

Answer #1 (04/2013):

A basic understanding of libel law is helpful. Libel is defined as a false statement of fact “of and concerning” a person that damages their reputation. Happily for novelists, there are relatively few successful libel in fiction claims. For a novel to be actionable, its detail must be convincing. The description of the fictional character must be so closely aligned with a real person that someone who knows that person would have no difficulty linking the two. And, there must be an implicit belief that what the novelist wrote – despite her denials or disclaimers – was true.

While libel-in-fiction suits are rare, in 2009 a Georgia court awarded a plaintiff $100,000 in damages because of a fictional portrayal of her in the bestselling novel, The Hat Club by Haywood Smith. The plaintiff sued the author (her former friend) because she was falsely depicted in the novel as a sexually promiscuous alcoholic who also drank on the job. From a libel defense perspective, this drawn-from-life portrayal failed, in part, because the author included personal characteristics that made the plaintiff recognizable, and mixed them with other traits that were false and defamatory, but still believable.

While changing all the names helps, make sure that the characters in your novel don’t closely resemble the real life people you modeled them on. You might consider transforming them beyond recognition, changing not just names, but the locale of your story, the characters’ ethnic identities, occupations, their likes and dislikes, even their hobbies and the kind of cars they drive. Why? If what you wrote is defamatory, and a reasonable person could reasonably connect a character with the character’s real-life inspiration, the potential for legal trouble exists. Further, you took a detour from best practices by putting your relative on alert by asking permission.

In your situation, because you sought permission, I’d strongly recommend that you change the physical characteristics of your characters – and other identifiers — enough to mask their identities. An even greater risk lies if by “more exciting and stressful” you mean your embellishments include unverifiable allegations of criminal behavior, sexual deviance, professional misconduct, and the like. If a reasonable reader makes a connection to the real life counterpart, the risk of libel is mitigated if the character is depicted as being likable rather than venal and vicious. Combine or clone several people’s physical traits and biographical facts. If the work is not “of or concerning” an identifiable person, you have a complete defense to a libel lawsuit based on fictionalization.

Here’s a run-down of a few techniques that can minimize the chance of getting sued for libel in fiction: (a) disclaim; (b) disassociate the doppelgänger from its real-life counterpart; (c) depict but do not disparage; and (d) verify facts, as truth is a complete defense to libel. Or, wait for the real-life counterpart to die before publishing your novel, as neither the deceased nor their estate can commence a defamation lawsuit. Disclaimers, while helpful, are by nature, self-serving. As such, they cannot insulate you from a libel suit. They may, however, support the defense that identification with a real person in your novel is unreasonable. The prominent use of the words “A Novel” in the subtitle of a book is considered by some attorneys to be the best form of disclaimer. In addition, a full disclaimer should appear on the reverse title page of your novel, or skillfully integrated into the introduction or preface of your book.

I would be remiss if I did not bring up three other legal horrors. First, the law of defamation is not concerned with who you intended to target, but who gets struck by your barbed arrow. What that means is unintentional defamation is actionable. “Woops!” is not a defense to libel. If you shoot an arrow in the air, where it lands, not where you intended it to land, is all that matters. Lawyers who vet, and writers who write, need to watch out for innocent literary bystanders.

While publication of truthful information is generally considered a full defense to libel, private individuals can sue for highly offensive or embarrassing truths. So, if your book goes too far and reveals intimate areas of a person’s life – sexuality, family life, medical procedures, and mental (in) capacity – you may invite a right of privacy claim. Are there defenses? Perhaps.

The right of publicity involves the unauthorized use of a person’s name or likeness for commercial gain. It is related to the right of privacy. Fortunately for novelists, due to free speech considerations, courts historically construe publicity rights narrowly. But, that’s the subject of another Q&A.

If you feel uncomfortable with the legal minefield of libel, right of privacy and right of publicity law, consult a publishing attorney. There’s also publisher liability insurance. A publishing attorney can evaluate or vet your manuscript, and suggest ways to mitigate or avoid many of risks of writing about real people and actual events.

Lloyd J. Jassin provides counseling to book publishing, television, theater, new media, arts and entertainment clients on contract, licensing, copyright, trademark, unfair competition, libel, right of privacy and general corporate law matters. His practice includes drafting and negotiating publishing and entertainment industry contracts, intellectual property due diligence, trademark prosecution, dispute resolution and litigation. http://www.copylaw.com


Answer #2 (04/2013):

As you read the following advice, please keep in mind that, in the words of a popular Internet catchphrase, “I Am Not A Lawyer.”

To be honest, the fact that you’ve already publicly stated, in this question, that your story is based on real-life situations, even though all the names of the family members have been changed, along with the places and other identifying details, ought to set off alarm bells for any good attorney. Because your best argument was probably going to be that even if there was SOME tangential connection to real life events, the story you’re telling is SO completely different from those events, and the characters you’re writing about are SO completely different from the real-life people involved, that nobody would reasonably be able to recognize your characters as stand-ins for anybody in the real world.

So the first thing I would probably recommend is that, moving forward, you say as little as possible about the real-life origins of this story, and certainly don’t commit any of those types of admissions to writing. You could probably get away with saying the main character, the first-person narrator, is based on you and your life, but the fewer dots that you connect for anybody else, the more plausible deniability you’ll have. Also, the more you talk about how much you’ve drawn from your life, the more that undercuts the standard “This is a work of fiction etc. etc.” disclaimer you’ll be including in the published book.

In the story itself, you’ll want to make sure that any character who draws at least some inspiration from somebody in real life have been given so many different characteristics that it would be very difficult for that person to point to the book and say “That’s obviously supposed to be me, and you’ve depicted me in a credible and defamatory light.” Unless they can make that case really clearly, they’re unlikely to win any legal action they bring against you.

The only surefire way to avoid being sued by somebody you’ve based one of your characters on is to wait until they’re dead before you publish. Beyond that, I would seriously recommend that you hire an attorney who specializes in libel law and go over your concerns with her in detail. She can go over the manuscript with you, highlight any problem areas, and if you need to make further revisions, you’ll have taken care of that well before the book gets out in the world.

~ Ron Hogan Ron Hogan helped create the literary Internet when he launched Beatrice in 1995. His latest website, TheHandsell.com, recruits authors and independent booksellers to make personalized recommendations for readers based on the books they already love. He lives in Queens.


Question:

I would like to include lyrics to 20 songs from a single musical artist as an introduction to each chapter of my book. The lyrics are integral to the chapters and the story as a whole. I know who I need to contact to get permission to reprint lyrics – I just need to know what I should ask for in the negotiation. I’m thinking of asking for permission to reprint a low quantity of books to get a low per song rate, like around 10-20K quantity to start with an option to then purchase for unlimited quantity if I were lucky enough to sell that many copies. Can you please tell me what else I should be aware of or request as I try to negotiate to reprint lyrics in my book?

Answer (04/2013):

In addition to the initial print run, you will need to tell them what territories and languages you will distribute the book in. Of course, if you plan both a print and eBook edition, obtain a license for both, and make certain not to exceed the print run you negotiated a rate for.

Lloyd J. Jassin provides counseling to book publishing, television, theater, new media, arts and entertainment clients on contract, licensing, copyright, trademark, unfair competition, libel, right of privacy and general corporate law matters. His practice includes drafting and negotiating publishing and entertainment industry contracts, intellectual property due diligence, trademark prosecution, dispute resolution and litigation. http://www.copylaw.com


Question:

When including an original photograph for use in a novel, and the subject matter in the photo is recognizable (in this case, a Jim Shore Christmas ornament,) is there any need for some type of release? The ornament is not depicted in a negative light or mentioned in the story, and is just being used to symbolize the holiday. The photograph was taken by our photographer.

Answer (04/2013):

Alas, this is a more complex question than you suspect. The complication arises primarily from the fact that the nature of the photo subject will drive different legal issues and risks.

For example, if the primary subject of the photo is an independently copyrightable work (like an original painting or an ornament), then although you may have permission from the photographer who holds a copyright in the photo, you may also need permission from the owner of the copyrights in the subject photographed. In this example, we would also consider whether the proposed use might reasonably be characterized as a fair use. There are few bright line rules for determining whether a use is fair and each case is assessed on its own unique facts. We look at the character of the proposed use, the nature of the subject work, the amount of the original work used, and the effect of the use on the value of the original. This analysis would produce one answer for use of a photo of an ornament in a scholarly piece on the influence of cultural holidays on art, and it would produce a very different answer for a use of a photo of a Jackson Pollock painting as a chapter opener in a true crime novel. In your example below, I think that a fair use claim as to the ornament would be a stretch, but as a practical matter it may also be very unlikely that Shore would notice or care enough to pursue a claim.

On the other hand, if the photo is a portrait shot of a person, the issue raised may well be misappropriation of that person’s right of publicity, again closely dependent upon the context of the use.

If the photo is of a man and a woman talking in an office and the use is in a book chapter on sexual harassment in the workplace, the issue raised may be false light or libel.

It isn’t hard to imagine photos that would raise no prospect of trouble – a landscape shot of the Mississippi River delta, for example, regardless of how and where it is used. But it is equally easy to imagine all manner of combinations that would be highly problematic.

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324.


Question:

Hello, I have a section at the back of my book with “endnotes.” I have obtained permissions for some of the quotes I am citing. Others are in the public domain, or are fair use.

I’d like the endnotes to be consistent with each other. I have 2 questions regarding this:

1) How can I achieve this if some permissions are granted if I cite the source in the format the publisher gave me, which is different than the format I am using for the rest of my citations? And different publishers have requested that I use different formats. (My copyright attorney said the formats will just have to be different, as I must comply with the format that the publisher asked I used when I was granted permission.)

2) Should I just list “with permission” on those I got permission for, and not list “fair use” or “public domain” for the others?

And one question regarding citations from a website: Where I took a brief quote from a website – is it ok to just say “retrieved from….” and not list the date it was retrieved, since I think it looks a bit awkward to list the date.

Answer (o3/2013):

Why not put the footnotes in whatever format the author/publisher wants to use and then provide a separate “credits” list or page, with the credits in the format desired by the rights-granting party for those permissioned extracts?

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324.


Question:

I am a very small publisher. Recently, one of my authors informed me that she wishes to terminate our contract and has given me the required 90-day notice as indicated in my contract. This has never happened before and although I’m sad that she is unhappy, I’m also concerned just what should happen now from a legal standpoint. My contract says nothing about what rights she has and what rights I have when the contract is terminated. (Yes, I did have a lawyer evaluate my contract, but this concern never arose.)

What typically are authors allowed to legally keep when they leave a publisher? Obviously, she wrote the book and she has the right to do with it as she likes, but I also put in a great amount of time and money on the book and I want to be fair. For instance, does a publisher typically relinquish their right to the newly edited and formatted manuscript when the author goes to a different publisher? I don’t know if it would even be possible to insist that the author revert back to the original manuscript when they present their book to a new publisher? What about the title if it was created by the publisher? What about the book’s cover, which was commissioned and paid for by the publisher? What about the ISBN?

Obviously, once I determine the best way to handle this issue, I will certainly update my contract to reflect it. Thank you.

Answer (03/2013):

Here’s my take on this, based on our contracts. First, we don’t have a clause that allows an author to “withdraw.” Once an author gives us the right to publish….we own the rights to publish the book. The author can get ticked off or whatever….but we still own the rights to publish the book.

The author owns the copyright, but we own the right to publish the book, and we can publish the book for as long as we wish (regardless of what the author wants.) However, if we let the book go out of print, after six months the rights revert back to the author.

So…what I am saying is: if the publisher raising the question here has a signed contract that gives him the right to publish an author’s book….he would still own those rights…and the author could not take off with the book. However, maybe his contract reads that if the author wishes to walk away, he/she gets the rights back. This type of clause would not be a good thing to have in a contract because publishers could spend a lot of time and money on a book and then the author could just waltz off and take the book with him/her.

If this publisher does own the rights….I don’t know what it means to say the author can cancel the contract with 90 days notice. The legal question is: is the author cancels, do the rights revert back to the author. If they do not, the publisher can continue selling the book.

If the rights do revert back to the author…the author does not own the cover or the master file for the book. If the author went to another publisher, he would need to give the new publisher a manuscript/word file. The original publisher does not hand over the cover, the ISBN etc.

All the author would have is his/her own copy of the manuscript. The author does not own the typeset version….and another publisher could not simply reprint the book…unless the current publisher gives permission.

If the attorney was not a literary attorney, he/she might not have known about some of the clauses to include. However, the Grant of Rights to publish is pretty basic. If an author does not give a publisher the right to publish….the publisher has nothing.

Rod Colvin is the founder and publisher of Addicus Books, an independent press that has published consumer-oriented books on health, self-help, how-to, and business since 1994, based in Omaha, Nebraska. Rod previously served a four-year term on the IBPA Board of Directors.


Question:

What is the industry standard for ownership of writing done on assignment while employed by a publisher or as an intern of a publisher? Does anyone copyright for the employee or intern, or is it strictly copyright of the publisher only? In what case would a publisher allow the employee or intern to own the copyright on their writing?

Answer (03/2013):

In regard to your question, in virtually all cases, any writing done for one’s employer is the property/copyright of that employer, unless specifically exempted by a letter of agreement. In short, it’s considered Work for Hire. In order to avoid this situation, the writer should get a letter of exemption in advance. Keep in mind that I’m not an attorney. Jonathan Kirsch might have a different view of things.

Tom Woll is President of Cross River Publishing Consultants, Katonah, NY Woll has over 35 years of senior-level publishing management experience including: VP & General Manager, John Wiley & Sons; VP & Publisher, Rodale Press. Woll is an Adjunct Professor of Publishing in the Master ofPublishing Program at Simon Fraser University. He is the author of Publishing for Profit: Successful Bottom Line Management for Book Publishers (Chicago Review Press, 4rd edition 2010).


Question:

We would like to use a copyrighted image as part of the art for the cover of a novel. Though some allege that the copyright expired last year, others maintain it is still valid until 2022 so we don’t want to take a chance. We don’t intend to use the image as- is whole cloth which would be a violation if the copyright is indeed in force. We would like to use a digital copy as the basis of an illustration; trace it, apply effects, change the colors, etc. and incorporate the image as part of a larger design. Is that a permitted use?

Answer (03/2013):

If the image was published prior to 1923, it is in the public domain. Otherwise, with only very few rare exceptions, all works published since are copyrighted. Since the latest Congressional changes about ten years ago, the term is now life of the author plus 70 years.

This leads me to suspect the image is still well within copyright.

The sort of re-use describe would likely require permission from the copyright holder or his/her designee. Has the publisher sought to contact the creator? I would start there — it’s possible he/she will be flattered and won’t seek a fee or one that’s too high.

~ At Copyright Clearance Center, Christopher Kenneally works with his Business Development colleagues to help the company attract new customers and achieve greater penetration in existing markets. He has forged partnerships with technology providers, professional associations, and media organizations, among others. In addition, Kenneally is host/producer of CCC’s weekly podcast series, “Beyond the Book <http://www.copyright.com/beyondthebook> ,” and for On Copyright Education, CCC’s Educational Services brand, he presents a variety of programs on copyright and intellectual property issues.


Question:

I plan on self-publishing a travel guide about San Francisco in the US – I am not sure if I should get a writers liability insurance. Is this of need?

If I use quotes of famous people such as Scott McKenzie in my book, is it necessary to get an approval from the authors of the quotes before publishing? Or is it enough if I mention the quote in combination with the name of the person?

Answer (02/2013):

Most web users should know a few simple guidelines, principles so simple that you can generally assume them to be rules. (Worth noting that whether you are in the right or not, a lawyer on retainer can still hassle you–not fair but true):

You don’t need to ask someone’s permission to include a link to their site. You don’t need to ask permission to include a screen shot of a website in a directory, comment on that site or parody it. You can quote hundreds of words from a book (for an article or book or on your website) without worrying about it and you certainly don’t need a signed release from the original author or publisher. Poems and songs are special exceptions. Then you can worry. There’s a difference between being polite and observing the law. If you quote something (an idea, a notion, a recipe), the right thing to do is give credit.

Photos are a real issue, unless you are clearly commenting on the photo (as opposed to using the photo to make a point that a different photo could make as easily). When in doubt, be the person who took the picture. (Aside: Comp fight has an easy to use setting–do a search and hit “commercial” in the left hand column and voila–CC licensed photos, ready to go.)

PS: as soon as you make something and fix it in a tangible form, you own the copyright in it. No requirement that you register it with anyone. Putting a © notice is certainly a helpful way to let people know you consider it yours, but the law makes it clear that merely writing your creation down confers copyright to you. And… “all rights reserved” doesn’t mean anything any more, just FYI.

~ Seth Godin (http://www.sethgodin.com/sg)


Question:

I have a potential author who is writing her story of walking from Boston to Washington DC to protest The Vietnam War in the late 1960s. She wishes to use quotes (a few paragraphs) from the New York Times newspaper for that day at the beginning of each chapter in order to show why she is making the walk. She is a Quaker and this was her way of protesting the war.

Can the quotes be used with attribution without going to the NYT for permission? What about photos? It’s now almost 50 years later.

Answer (11/2012):

This is a legal question, and should be referred to a lawyer. If our company wished to publish this book as described, I would not proceed without getting legal advice. My reading of current law is that copyrights secured before 1978 may be good for 27 years. But I am not 100% certain. Copyright issues are best looked at on a case-by-case basis. But if my understanding is correct, excerpts could be used.

I would not advise under any circumstances reproducing any NYT photos without permission.

Now having said all this, perhaps use of short excerpts at the chapter starts would be considered “fair use” skirting around the copyright issues.

I recommend the author contact the NYT directly. She might get lucky and find out quickly that the paper will not object, given how long ago the material was first published. If the author does consult a lawyer she should frame her questions very clearly and simply in writing with a brief but complete description of what she has in mind to do. That will keep the lawyer’s time to an absolute minimum.

~ Kent Sturgis is a former journalist who in 1988 founded Epicenter Press, a regional trade book publisher based in the Seattle area that specializes in nonfiction books about Alaska and the Pacific Northwest. He also directs Aftershocks Media, a subsidiary company offering consulting, packaging, print management, and book distribution.


Question:

I am an author-publisher who will release my first children’s picture book in late spring 2013. I plan on creating a stuffed animal as a sideline for the project. I am now interested in beginning the trademark registration process.

For registering my marks, I have a limited budget. My question – due to budgetary constraints, do you feel that I can use LegalZoom.com or Trademark411.com instead of hiring an attorney who specializes in Trademark Law?

Answer (11/2012):

The problem with low cost services like the ones you mention is that you are going to get what you pay for – and where your brand is concerned, that may be problematic. It is possible to waste a lot of money (in the form of nonrefundable trademark office filing fees of $325 per class) applying for registration of marks that have no chance of successful registration. An experienced trademark attorney will steer you away from these high-risk applications; some of the low cost services just file whatever you submit. Any savings from a low cost service are illusory if the end result is that six or eight months pass and your application is rejected for reasons that could have been anticipated. You’ve lost all that time, spent at least $500 to $600 to no effect (much more if your application is for multiple classes of goods/services), and you’re right back where you started.

Apart from considerations of availability and registrability of your proposed mark, the application process is nuanced. If you make a mistake, it can affect the validity of your registration in ways that may not be apparent until you attempt to enforce it against an infringer or junior user. An experienced trademark attorney will work with you and probe for the information needed to assure that your application, if and when it issues, will be solid and not subject to attack. Getting a registration that later proves unenforceable is perhaps the worst outcome, because you will have invested not only in getting the registration, but also in promoting your brand, tooling up, and producing inventory, all of which may prove to be unusable long after you have committed the investment.

You may get lucky with a low cost service; problem is you may not know whether you were lucky or not until it’s too late to recover. You can also pay full price for bad advice if you use a lawyer who has not done a substantial amount of trademark prosecution work. So caveat emptor (let the buyer beware) is the watch phrase. A good benchmark would be to pick a lawyer who has focused his/her practice on trademark prosecution for at least 3 years and who manages an active portfolio of at least a few hundred marks (less experience might be okay if the person is part of a larger intellectual property group that provides oversight).

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324.


Question:

As a member of IBPA – I have enjoyed the resources and support from the members and advisors. Thank you for your past support in sharing your guidance. 
 
Our publishing group is looking to take on a new contract with an author who would like to sell a compilation CD of website url’s that relate to our market, healthcare continuing education. 
 
The specific area is infectious diseases and control and the author is an expert in his field. There are numerous resource available online and the compilation CD will include them all in one helpful resource. Many of the website have statements identifying content as public domain, permission required, etc. for ‘reprint’ purposes.
Do you know if there are any copyright laws for selling a CD of website url’s? Any resources I can look into further?
 
Thank you in advance for your assistance on this subject.

Answer (05/2012):

The publisher is the copyright holder of the materials and, thus, is the only party able to grant permission for its re-use, etc. I would think that the publisher in this case would be glad to grant the permission, given that the writer’s speaking engagement presents a promotional opportunity. The publisher can make any such permission as open-ended or restrictive as desired (i.e., for a single instance, or for a series, or for a specific period of time); the publisher can also specify how any citation(s) should read.

~ At Copyright Clearance Center, Christopher Kenneally works with his Business Development colleagues to help the company attract new customers and achieve greater penetration in existing markets. He has forged partnerships with technology providers, professional associations, and media organizations, among others. In addition, Kenneally is host/producer of CCC’s weekly podcast series, “Beyond the Book <http://www.copyright.com/beyondthebook> ,” and for OnCopyright Education, CCC’s Educational Services brand, he presents a variety of programs on copyright and intellectual property issues.


Question:

In publishing contracts where the author’s royalties are based on net revenues, what exactly is deducted from gross revenue to get the net?

I’m assuming shipping (unless the customer pays that), customs, distribution fees (if outsourcing distribution), fulfillment fees (if outsourcing fulfillment), sales commissions (if outsourcing sales), cost of collections, customs/currency exchange discounts. Am I right, am I assuming too much, have I missed anything?

Answer (05/2012):

In relation to the person’s question, the royalty amount is based on net dollars received from sales. Thus, the only thing deducted from the gross sale would be any discounts, shipping fees (including customs) and returns. Distribution fees, fulfillment fees, commissions, etc. are NOT deducted from revenues to get to this number. Please note that some smaller publishers do deduct distribution fees. We do not recommend this nor do we think it’s fair to the author when this happens. Why? Because these fees are normally costs of doing business, and would be incurred in any event. They are not author specific and author’s shouldn’t be penalized by deducting them from royalty-related revenues.

In essence, when using a distributor we recommend placing the revenues and costs of such an arrangement exactly where they would normally be found on a publisher’s income statement: Revenues on the revenue line; returns on the return line; warehousing fees below the gross profit line in the warehouse/fulfillment line(s) of the P&L. This ensures that the true costs of distribution are allocated to the proper revenue and expense lines of your income statement and you see a true reflection of these costs on your business.

Tom Woll is President of Cross River Publishing Consultants, Katonah, NY Woll has over 35 years of senior-level publishing management experience including: VP & General Manager, John Wiley & Sons; VP & Publisher, Rodale Press. Woll is an Adjunct Professor of Publishing in the Master ofPublishing Program at Simon Fraser University. He is the author of Publishing for Profit: Successful Bottom Line Management for Book Publishers (Chicago Review Press, 4rd edition 2010).


Question:

I am new to the world of Author/Publisher and have completed an eBook that my LLC will submit to an online eBooks distributor for consideration. Prior to submission, I would like to know if it is important to get some form of publishing insurance to protect me from possible law suits (liability, copyright infringement, etc).

I have taken all possible precautions that I can think of in authoring the eBook, but am concerned that something may have been overlooked. If publishing insurance is recommended, how do I find a reputable broker?

Answer (04/2012):

All book publishers should invest in insurance. A capable review of this issue was written by Lloyd Jassin and Stephen Schecter, both attorneys and can be found at http://bit.ly/HDjJyD. They write, “All writers and publishers should obtain a policy that covers, at a minimum, claims of libel, slander, invasion of privacy, invasion of the right of publicity, trademark and copyright infringement, and unfair competition.”

Different book genres carry different liability risks. A science fiction novel carries less risk than an expose. Regardless of the genre, there are inherent risks in the publishing business which should not be ignored.

Through IBPA you can find Publiability: http://www.ibpa-online.org/benefits/liability.aspx.

~ Christopher Robbins, Pater Familius (founder and president) of Familius, has been in the magazine and book publishing industry for more than twenty years, most recently as the CEO of Gibbs Smith. Charles Coonradt, author of Game of Work and The Better People Leader, called him “…one of those rare people who can conceptualize outside the box and make the seemingly impossible reality.” Christopher holds a BA and MBA from Brigham Young University.


Question:

Hello, I am looking for a little clarification on what the below text means. It is included on a publishing contract but I am unsure as to what exactly it means. Could you please explain it in an easy to understand manner. Thank you so very much for your time. Please find the paragraph in question below:

For the rights granted to license the Medium in paragraph 1b, fifteen percent (15%) of any royalties received from other parties licensed to adapt all or part of the Work to the Medium. These said royalties shall be determined after deducting any cost incurred by the Publisher in negotiating and administering such use or license.

Answer (03/2012):

I’m not a lawyer. If you have specific questions about any contract provision, do follow up with a contract or intellectual property attorney.

It would be useful to see paragraph 1b, but it looks like the clause you are asking about describes the royalties the publisher will pay to you if the publisher allows the adaptation (modification, conversion, etc.) of any part of “the Medium,” which I assume is the term the contract uses to define exactly what is being published.

In hopefully plain English, the publisher agrees to publish your book. The publisher is going to look for income opportunities related to your book in any way it can. The publisher will pay you a certain amount every time he receives income for selling your book or licensing all or part of it. One of these opportunities comes from licensing for a fee all or part of your book to a third party for the third party’s use. This clause defines your share of the fee that the publisher collects.

It looks like Paragraph 1b applies when the publisher allow the book or excerpt to be adapted to a different medium (television, theater, audio book, ebook, video game, etc.). Say the publisher allows someone like a movie studio to turn your book into a movie. In exchange, the publisher receives a payment of cash from the studio. You are entitled to part of this cash. This clause tells you that your share is 15% of what the publisher collects for permitting the adaptation.

The payment will be based, not on the total amount the publisher receives, but on the total amount received minus whatever it costs the publisher to make the sale. Costs might include phone calls, Fedex shipments, legal fees, and any other expenses incurred in the pursuit of the sale. Hopefully, they do not include lunches with bottles of Lafitte! I don’t know how the publisher handles the expenses of any failed attempts to license the content, say to a different studio. If it’s a concern, you could ask that a sentence be included in the contract to clarify that point.

This appears to be part of a typical publishing contract in that it seems to grant the publisher the authority to exercise all the commercial rights to the book for as long as the contract is in force. In other words, you agree to sit back and let the publisher control, not just the book, but all the derivative forms of the book as well. You may not exercise these rights yourself. If you have any objections to this or any other part of the contract, address them with the publisher before you sign the contract. Afterwards, it’s too late.

~ Bob Goodman has published books and provided services to the publishing community since1988. A former IBPA board member, he is the founder of Writers and Publishers of San Diego (an IBPA affiliate), a founding faculty member of the La Jolla Writers Conference, and a frequent presenter at IBPA’s Publishing University.


Question:

I’m working on a book by an expressive therapist who has spent 20 years or more working with people and their dreams. Her book consists of various cases, including dialogues and pictures made under the guidance of the author. Her approach is to invite the dreamer to lay out the dream (or problem) on paper, and draw or otherwise manipulate the dream to develop a solution.

Names, of course, have been changed, and images contain no information that anyone could use to identify a person — unless they were the person in question, or a very close friend w/knowledge of the particular therapeutic session.

My assumption has been that such stories by clinical professionals do not breach confidentiality but rather, offer tools for teaching and developing technique. My favorite published examples are the stories of Rachel Naomi Remen (My Grandfather’s Blessings; Kitchen Table Wisdom), which actually have much more identifying information in them.

However, having said all this, I wanted to ask the question in order to better understand the issue, and clarify what, if any, action I should perhaps take prior to publication in order to avoid any possible liability issues.

Answer (03/2012):

The two most likely claims that might arise from this scenario are 1) a claim by a patient of the author that the patient’s privacy has been invaded or that private healthcare information has been improperly disclosed; and 2) a claim by a patient that the information revealed about them is false and defamatory so as to be libelous.

With respect to #1, the claim of invasion of privacy based on public disclosure of private facts requires that the subject be identified or identifiable to members of the public and that the disclosure be highly embarrassing or outrageous. The fact that the patient might recognize themselves is not enough; they must be recognizable to others. However, because this book touches on healthcare, we have to think also about the special rules governing protection of private healthcare information. Although it is clear that those rules bind the author/therapist, it is less clear whether they might be extended to cover the publisher. If they do, there are special and elaborate requirements for anonymizing data that require the deletion of each and every one of 18 potential identifiers (including some dates), so it may be difficult to comply.

With respect to #2, a libel claim requires that the subject be identifiable (in this case to at least one person other than the subject). Although still unlikely given the steps taken to de-identify the subject, it is at least possible based on the information provided that one other person might identify one of the subjects. So we cannot rule out a libel claim if what is disclosed about the subject turns out to be false and defamatory in a way that injures their reputation or exposes them to public contempt or ridicule.

The best way to protect yourself as a publisher is to do a combination of things: select your authors carefully and work with them to ensure that they understand what is permissible and what is not; include strong reps and warranties coupled with an indemnification in your publishing agreement; and get a policy of media perils insurance as a backup for anything you missed. {See my articles in the Independent for more information about warranties, insurance, and rights clearance.]

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324.


Question:

We have a prospective author wanting to write a book related to our target area of healthcare. This ‘new’ author is planning to speak on her topic for a healthcare seminar with a different company. She shared with me some of the content in her proposed book is from–or similar to–her seminar content.

Our philosophy as her prospective publisher is that we hold the copyright as her publisher and she would only publisher her works through our publishing group and not take her content elsewhere.

Is there a way for her to speak about the content for her seminars and write her book for us? Will citations of her work during the seminar–suffice in referencing the content?

Answer (02/2012):

The publisher is the copyright holder of the materials and, thus, is the only party able to grant permission for its re-use, etc. I would think that the publisher in this case would be glad to grant the permission, given that the writer’s speaking engagement presents a promotional opportunity. The publisher can make any such permission as open-ended or restrictive as desired (i.e., for a single instance, or for a series, or for a specific period of time); the publisher can also specify how any citation(s) should read.

At Copyright Clearance Center, Christopher Kenneally works with his Business Development colleagues to help the company attract new customers and achieve greater penetration in existing markets. He has forged partnerships with technology providers, professional associations, and media organizations, among others. In addition, Kenneally is host/producer of CCC’s weekly podcast series, “Beyond the Book <http://www.copyright.com/beyondthebook> ,” and for On Copyright Education, CCC’s Educational Services brand, he presents a variety of programs on copyright and intellectual property issues.


Question:

I’m a new member of IBPA and sole proprietor 1021 Press working on self-publishing my late husband’s memoir POD. I have received conditional permission from Hal Leonard Corporation to use lyrics from a song in the memoir contingent upon me signing the agreement they have sent me. The agreement seems pretty straightforward, but because of my inexperience I have a question about a part of the agreement dealing with making changes in the book. I would like someone familiar with this kind of agreement to comment on the following statement from the agreement: “You hereby agree that neither the format nor the contents of the Publication shall be altered or changed in any way without our prior written approval.”

Is this standard language for such an agreement? What if I want to make corrections in the text or update something? I have limited funds so I’m hoping you can give me a suggestion within my reach. Thank you for your consideration.

Answer (01/2012):

Congratulations on your self-publishing venture. The fact that you have asked for and gained permission for use of the lyrics indicates that you are approaching the publication of your book with thoroughness and skill. And, you have joined IBPA — which will prove to be a great decision for you as you move forward.

The phrase you ask about that requires you to notify the Hal Leonard Corporation first before changing any of the format or the contents is quite standard. They are giving you permission only for the use that you indicated in your request. They need to be assured that once they give you this permission you will not change the meaning or context of that use. I would be quite comfortable agreeing to comply with this statement. I would also be quite comfortable later correcting any errors and/or making small updates as needed in the product without contacting them again. Just be sure that you do not alter your book or its message in any material way, and that you do not use the lyrics in any way other than those you have indicated in your request. For those changes, you will need to contact them, inform them of the altered use and request their approval once again.

~ Don Tubesing is the Founder and President of two publishing companies, Whole Person Associates, Stress and Wellness Training Materials, and Pfeifer-Hamilton, whose 51 regional and children’s books won 107 major awards including 27 Ben Franklins, two American Bookseller Books of the Year (Old Turtle and The Quiltmaker’s Gift) and three Best Marketing Campaign of the Year Awards. Strengths: Estimating and “from the ground up business skills”, renowned for Marketing campaigns with low budgets and high sizzle, Intuitive Common Sense Consulting.


Question:

I am an editor at for a small publishing company in Montana, and we are now starting to publish eBooks. We are working on the contract language for backlist titles (author contracts), and we want to integrate ebooks into our contracts for new books as well.

Any advice on resources for eBook contract language with authors (backlist and new books)?

Also, we are seeking advice on the type of contract language to incorporate into new contracts that addresses the possibility of using part of an author’s work in a future eBook (that combines the author’s work with other authors’ work).

Answer (12/2011):

I am not aware of a good, always-up-to-date source for contract language on the issue of royalties on e-books.

For one thing, both the technology and the typical business terms are constantly evolving. What was accepted in 2009 may no longer work now that we have some distributors working on the agency model instead of the wholesale model.

For another, good book contracts are not put together by plugging in paragraphs from disparate sources. You can’t just take a provision out of a professional book contract and plug it into a trade book contract because the odds are that some of the terminology and the business terms are not interchangeable.

So any source for e-book royalty language needs to have been recently updated and in using anything from that source, you have to understand whether and how it works with the other provisions in the contract you have.

Articles in the Independent are a good source of useful and current info if you see something on point. The closest I know of to this issue is a piece I wrote for the September 2011 issue: Acquiring the Right Rights: Will Your Contract Keep Up with the Markets for Your Books? http://www.ibpa-online.org/membersarea/shownews.aspx?id=3165

This article includes a sidebar with some representative contract language, but will probably not completely address this member’s interest. Why not write to Independent Publisher, Judith Applebaum, and ask her to publish a piece on this topic.

– Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324


Question:

Are there legal issues with referencing a trademarked name in a quote in a book?

For example, in a book of illustrated pick-up lines, a pick-up line said to the author was “I hope you smile at my Harry Potter,” which she interpreted with an illustration of a human figure with a witch’s hat covering a the torso of the figure.

Answer (10/2011):

Publishers have the right to use another party’s trademark in the text of a book to refer to the branded product or service as long as this is done in a way that does not invite readers to conclude incorrectly that there is some affiliation, endorsement, or other connection between the brand owner and the book publisher.

In this instance, “Harry Potter” is the registered mark of Warner Brothers for use in connection with a variety of goods and services, not including, however, the thing being reference in the pick-up line. I think it is safe to say that Warner Brothers would be offended by the tasteless use of their otherwise wholesome property. And whereas publishers have broad First Amendment rights with respect to what they might include in their books, the more inflammatory or offensive the remark the more likely it is to draw objection.

Although, as a practical matter, the mark is not being used here in a way that creates a likelihood of confusion as to source or affiliation (the more typical trademark infringement claim), the use is sufficiently offensive that the owner may stretch a bit to find other similar grounds for objection ­e.g., dilution by tarnishment, disparagement, or trade libel. The fact that the reference is in a quote attributed to some other will not in and of itself insulate the book publisher from a claim based on the publisher’s republication of the offensive remark.

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324.


Question:

I just finished my first work of fiction. My question has to do with the disclaimer on the copyright page.

Most books say that it is purely a work of fiction and that the characters are not real. Is this enough when you have used actual historical news events in your story?

I have used actual news events and weaved them into the story. The people in those news events are not characters in my story. I just mentioned them in passing in my story. Is this okay?

Answer (10/2011):

You may want to consult an attorney if you are in doubt, but I believe your risk of legal trouble is slight if you are basing your fiction on public events and your characters are mentioned “in passing” and are not held up to ridicule nor their privacy invaded.

Also as long as you are fictionalizing you might consider writing fictional characters as well, based on real characters but with different names and backgrounds.

~ Kent Sturgis is a former journalist who in 1988 founded Epicenter Press, a regional trade book publisher based in the Seattle area that specializes in nonfiction books about Alaska and the Pacific Northwest. He also directs Aftershocks Media, a subsidiary company offering consulting, packaging, print management, and book distribution.


Question:

I have a specific question related to copyright laws and clipart.

We have an author that has clipart in her manuscript. She obtained the images from Microsoft. We have reviewed Microsoft’s terms of use and it isn’t clear if these images can be used in her vision for a publication.

The images are supportive only to the sub-topics within the first chapter related to Crisis Prevention and being aware of your surroundings. What recommendations do you have for use of clipart in a printed book? Or, are there any resources you can direct me to for learning or reading up on Publishing Law?

Answer (10/2011) :

The use of clipart is governed by the terms of the license that accompanies it. Generally these terms anticipate that the art will be used in works that are distributed and sold. What is usually precluded is use of the clipart to build another clipart collection.

In this case, it sounds as though the language of the license is unclear. One obvious strategy is to simply call the clipart publisher and ask them if the contemplated use is covered. If you get the answer you want, simply memorialize that in a confirming email and put the email in your permissions file.

A more aggressive strategy is to rely on the ambiguity in the license — generally speaking, ambiguities in contracts are resolved against the drafting party. So if one reasonable reading of the license supports the use you want to make, that reading will likely be enforced. That said, we were not provided with a copy of the license at issue and so are not in a position to say whether the language is or is not truly ambiguous.

Please understand that this response is intended to be informational and is not meant as legal advice. Before acting, always consider consulting with an attorney who is familiar with all of the facts and circumstances relevant to your own situation.

~ Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. Contact him at sgillen@whepatent.com or 513/241-2324.


We hope you will find this program useful, but as with any advice, we recommend that you make sure it fits your specific business needs. IBPA does not specifically endorse or support any particular group or service.


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