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Registering Trademarks and Copyrights in Book Publishing Deals

Once an author lands a book deal, negotiations begin. Typically, these negotiations start with a preliminary discussion between the author and the publisher about the terms of the book publishing contract. The publisher then memorializes the details of that discussion in a memo. This memo generally includes details about the grants, royalties, and any options for future books. Then, the publisher drafts the contract based on their standard book publishing contract.

There are many terms and clauses in the standard book deal that need to be renegotiated and redrafted to be more favorable for the author. These negotiations are done by the publisher and the author’s literary agent or lawyer and their trademark lawyer. Most often, the author’s literary agent or lawyer will review the contract and make changes called redline edits. The publisher will then review these changes and decide whether it accepts them or not. Typically, this process will go back and forth for a couple rounds until both sides are happy with the deal.

This series informs authors, literary agents, lawyers, publishers, and other interested readers about the basics of book deals. It provides tactics and tips to be used when negotiating a book deal. It consists of three parts that cover negotiating the following topics:

  1. Registering Trademarks and Copyrights
  2. Exclusivity and the Grant of Rights
  3. Subsidiary Rights

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Once a book is finished, an author may be curious as to whether he or she should register the copyrights and trademarks in his or her book, title, and cover design. This post discusses how the book publishing contract regulates copyrights and trademarks. It provides authors, agents, lawyers, and publishers with tips and tactics for negotiating who is responsible for registering trademarks and copyrights.

Copyright Registration

Generally, books are creative works that are protected by copyright law simply by being written. There is no requirement that an author register the copyright in a book. However, authors can seek additional protections and advantages by registering the copyright in their book before submitting their book to publishers. For example, an author that registers the copyright in his or her book can obtain statutory damages and attorney’s fees in federal court. Registration is also seen as prima facie evidence of copyright ownership, if the case does go to court.

Alternatively, the author may choose to rely on the publisher to submit the copyright registration. This does not fully protect the author against the possibility that the book may be plagiarized by a beta reader, editor, publisher, its employees, or some other party that has access to the work before publication. Nor does it protect the author against the possibility that the publisher may forget or fail to properly register the copyright in the book. In such instances, the author will only be able to seek actual damages and profits (excluding attorneys’ fees) which will likely be much less than if the copyright was registered by the author ahead of time.

As many writing blogs point out, it is not necessary for an author to copyright his or her manuscript before sending it out to agents or publishers. Your book is already protected just by being fixed in a tangible medium – in other words, by being written. Hopefully, there is little to no chance that your book will be plagiarized by the friends you ask to read your manuscript or reputable agents and publishers. However, there is a chance that the work could be infringed, and $35 is a small price to pay for piece of mind.

Copyright registration is an easy process, but authors may seek an attorney to complete the registration process properly. Those authors that do choose to copyright their manuscript should beware of online registration services that charge exorbitant fees or suggest paying extra for unnecessary certificates of ownership. Likewise, authors should avoid falling for the myth of the “poor man’s copyright.” Sending yourself a a copy of your manuscript in the mail and keeping the envelope unopened as evidence that you wrote the manuscript before the postmarked date is not a protection recognized by the copyright statute or by U.S. courts.

Trademark Registration

On the other hand, the title and cover design of the book may also be protected by trademark registration and trade dress rights. Typically, authors will not register trademark in their work before publication. Instead, the publisher’s in-house team will register these rights for the author.

In the event that an author does wish to trademark his or her work, such as an author who self publishes, a trademark attorney should be consulted, as the trademark registration process is more difficult and legally technical than the copyright registration process. A trademark attorney can provide authors with a thorough search of the Trademark Electronic Search System and relevant case law to advise an author on the likelihood that their title or cover design will receive protection.

A trademark attorney can also counsel authors on what classes their works should be registered under. Typically, authors will want to register under Class 16 which covers paper and printed products such as books. There may be other applicable classes such as Class 9 which protects audiobooks among other relevant products. In addition to being more confusing than copyright registration, trademark registration is also more expensive. The filing fees alone cost between $225-$400 per class.

Registration by the Publisher

Many authors will decide to postpone copyright registration and allow their publisher to complete the registration process in-house. If the author plans to rely on the publisher to register the copyrights or trademarks in the book, title, and cover, then the book publishing contract should include a clause which states that it is the publisher’s responsibility to do so in the author’s name but at the publisher’s expense before publication.

Separately, the author should ask the publisher to agree to indemnify the author, in case the publisher forgets or fails to properly register the copyrights or trademarks in the book, title, or cover.

Copyright Notice

The book publishing contract should require the publisher to include a notice of copyright in the name of the author in a form, place, and manner that complies with copyright law in the United States and/or wherever the book is published.

Assignment vs. License

An assignment occurs when an author gives up the copyright in the book to the publisher. In other words, the author no longer owns the copyright in the book, and the publisher is now the rightful owner of the copyright. This is most common in scenarios where the author is an employee of the publisher. For example, a journalist whose work is routinely published by a news magazine.

A license occurs when an author grants a publisher permission to use the copyright. In other words, the author retains ownership of the copyright in the book, and the publisher may reproduce, distribute, and sell the book. As such, an author of a book or series should always consult a trained agent or licensed attorney to ensure that the book publishing contract grants the publisher a license to exploit the work, not an assignment of the copyright. It is the agent or attorney’s job to guarantee that the book deal is as favorable to the author as possible in this regard.

About: DJ turned JD highlights the latest legal updates in the entertainment and media industries, intellectual property, the internet and social media. The blawg is compiled and curated by Bobby Desmond. After working as a radio personality, Bobby attended the University of Florida Levin College of Law in order to pursue an in-house legal career at an entertainment or media corporation. He has interned at PBS with America’s Public Television Stations in Arlington, VA and at AMC Networks in New York, NY. He graduated in May 2018 and passed the New York Bar Exam in July 2018.

New Lawsuits from the Internet invoking IP and Media Law

  • Another Rich Man Sues a Website after Bad Press. In a case that is reminiscent of billionaire Peter Thiel financing Hulk Hogan’s suit against Gawker after the site outed Theil as gay, game developer Jonathan Monsarrat is suing Encyclopedia Dramatica for publishing a wiki-page which cited to stories accusing the millionaire of creating a dating service to collect information on women and allegedly distributing alcohol to teenagers. (This is not the first time Monsarrat has sued a site that published unflattering stories about him. He previously sued a LiveJournal blogger that posted a story about his arrest in 2010. Monsarrat later dropped that case after it became clear that it was brought in bad faith.) The newest suit claims Encyclopedia Dramatica infringed on Monsarrat’s copyright in quotes from forum posts and a photo of Monsarrat in a beaver costume. Encyclopedia Dramatica believes this suit was also brought in bad faith. Follow this case for potential anti-SLAPP litigation, for insight on the recent trend of websites being sued by the rich for publishing unbecoming stories and on the recent trend of websites crowdfunding legal defenses.
  • Spotify Sued after Struggling to Obtain All Necessary Music Licenses. Amongst rumors that the company plans to launch on the NYSE, Spotify was recently hit with two copyright infringement lawsuits (here and here). Spotify has deals to license the sound recordings and other licenses to publicly perform the songs, but songwriters and music publishers are suing for unauthorized use of the song compositions. The streaming service sends out notice of intention letters as required to attain Section 115 compulsory licenses from the songwriters and publishers, but argues that finding each of the co-authors of their entire catalog is too hard a task. Spotify has settled similar cases in the past for tens of millions of dollars. Keep up with these cases to remain fully aware of the development of mechanical licenses in the age of the internet and for insight on class action lawsuits that involve IP infringement.
  • Requesting Access to Social Media Accounts in the Hiring Process. A new lawsuit alleges NBC demanded prospective employees share their personal social media accounts before being offered an interview. Half the states ban prospective employers and universities from requesting access to a prospective employee’s personal social media accounts. Although requesting social media access is not prohibited during the hiring process in New York, providing access to personal social media accounts could potentially reveal protected Equal Employment Opportunity information such as age, religion, and medical information.
  • Sci-Hub Sued Again for Providing Free Access to Scholarly Works. Hoping to mimic a $15 million award for a similar plaintiff in the Southern District of New York, the American Chemical Society is suing Sci-Hub under copyright and trademark law for spoofing the ACS’s website and provided access to over 62 million academic publications (which are published by a collection of sites including ACS, Elsevier, Springer, and more.) Some academics believe the publishing sites are unlikely to receive any of the awarded damages, since Sci-Hub is run out of Russia under a variety of domain names and IP addresses. Other academics, however, intend to use these case as inspiration in their protests against the publishing sites for affordable access to academic publications. Follow this string of cases for insight on collecting damages from defendants overseas and for trends in the licensing of scholarly works.
  • Jenner Shirts Inspire Social Media Outrage, Lawsuits, and Satirical Copycats. Kendall and Kylie Jenner received a cease and desist letter for use of The Doors’ likenesses, after the reality star sisters released a line of $125 t-shirts with the images of the band and other musical icons including Tupac Shakur, Metallica, Pink Floyd, Ozzy Osbourne, and Biggie Smalls. The family of the Notorious B.I.G. took to Instagram to declare that the shirts had no affiliation with or approval from the rapper’s estate, while Sharon Osbourne sent out a tweet critical of the girls’ decision to include her husband in their fashion line. After only two shirts were sold, the line was pulled, and Kendall Jenner tweeted an apology. The photographer behind the Tupac Shakur images is now suing the sisters for copyright infringement, but the Jenner sisters claim to have a valid license for the images. (Shortly thereafter, the rock band Arcade Fire satirized the shirts by making their own versions to mock the Jenner sisters, followed by an apology tweet that mimicked Kendall’s own tweet.) Separately, Kylie Jenner is being sued for copying an artists’ painting of biting lips for an advertisement promoting her upcoming show, Life of Kylie. Keep up with these case for more tweets from celebrities attempting to sound like lawyers.
  • @realDonaldTrump Faces a #realLawSuit after Blocking Twitter Users. The Knight First Amendment Institute at Columbia University is representing a flock of Twitter users who have been blocked by the President’s account. The suit claims @realDonaldTrump is a constitutionally protected public forum and that blocking users unconstitutionally prohibits access to government statements and unconstitutionally prevents petitions for redress of grievances. In a similar case, the United States District Court for the Eastern District of Virginia ruled that a Facebook user’s constitutional rights were violated when a county official blocked his account. Separately, a photographer is suing the Trump Organization for copyright infringement after the company posted the photographer’s copyrighted work on its site and the @realDonaldTrump Instagram account. Follow these cases for insight on how Trump critics are using the First Amendment and IP law as a check and balance against the President.

About: DJ turned JD highlights the latest legal updates in the entertainment and media industries, intellectual property, the internet and social media. The blawg is compiled and curated by Bobby Desmond. After working as a radio personality, Bobby attended the University of Florida Levin College of Law in order to pursue an in-house legal career at an entertainment or media corporation. He has interned at PBS with America’s Public Television Stations in Arlington, VA and at AMC Networks in New York, NY. He graduated in May 2018 and passed the New York Bar Exam in July 2018.