Guidelines for Authors When Drafting Publishing Agreements and Protecting Their Intellectual Property From Infringement

Guidelines for Authors When Drafting Publishing Agreements and Protecting Their Intellectual Property From Infringement

Authors: want some help in protecting your works? Here is the text of a talk I will give to the Cornell Entrepreneur Network on November 17 on how authors can protect their intellectual property. This post is long and ignores conventional wisdom that blog readers stop reading after 1,000 words.

But you may find some useful tips here. Included below is a discussion of the 8 key clauses you need to understand in your publishing agreement, suggestions about how to monitor your work to avoid infringement and a discussion of when your work will be infringed. At the end of this post is a link to the PowerPoint that will illustrate this talk.  With that into here is the talk:

A. What is Protectible; Some Examples

The title of this program is “Protecting your IP” so let’s 1st define what is protectible. Ideas are not protectible only their expression can be protected. If you started to roll your eyes when I said this you are not alone. Understanding the distinction between an idea and its expression is not easy

The case of Rogers v Koons helps explain the distinction. In Rogers the photographer, Art Rogers, created a wonderful photo of eight puppies sitting on a bench. Jeff Koons, a self-styled “appropriation artist,”  sent the photo to an Italian craftsman and told him to create a sculpture that copied the photo.

The Second Circuit Court of Appeals found that Koons copied not simply the idea of the puppies photo but its expression, stating:

We recognize that ideas, concepts, and the like found in the common domain are the inheritance of everyone. What is protected is the original or unique way that an author expresses those ideas, concepts, principles or processes.

It is not therefore the idea of a couple with eight small puppies seated on a bench that is protected, but rather Roger’s expression of this idea—as caught in the placement, in the particular light and in the expressions of the subjects–that gives the photograph its charming and unique character, that is to say, makes it original and copyrightable.

Here are the two works, with Rogers’ photo on the left:

That case was settled by Mr. Koons after he was unable to get the Supreme Court to review the 2d Circuit decision. Kudos to my colleague at the firm, Donald Prutzman for skillfully handling it on behalf of the plaintiff.

Let’s now focus on literary works. In that genre, unprotected ideas include indispensable, standard or naturally occurring elements in the treatment of a given topic.

What are some examples of unprotected standard or naturally occurring events? The Walker v. Time Life Films case presents some useful examples. That case focused on a film staring Paul Newman and his exploits at the 41st Precinct in the South Bronx also known as Fort Apache. Walker sued Time Life claiming that the film copied the creative elements of his book.

The court disagreed. It stated that the elements in both the book and the film, such as drunks, prostitutes, vermin and derelict cars, would appear in any realistic work about the work of policemen in the South Bronx. Because these elements are commonplace and inevitable, the court said they were unprotectible.  The court added that only if these elements are given unique expression will they be protectible.

These cases where one author claims that another has appropriated his or her work are common and in most cases turn out badly for the plaintiff. Why is that? There are two reasons. First good defense counsel is often able to show that what the plaintiff claims is unique is really commonplace in a work of this type. That is the Walker/Time Life situation. Second defense counsel is often able to show subtle but significant differences between the plot/sequence and characters in the two works. So my advice to authors who believe they have been infringed is to understand the road ahead to a litigation victory will not be easy.

B. Forms of Copyrighted Expression

So what forms of copyrightable expressions are protected?

Copyright protects “original works of authorship,” whether or not published so long as they are fixed in a tangible medium. Protected works include music, books, magazines, photographs, movies, paintings, sculptures, phonograph records and choreography,

Originality means independent creation, not novelty. Courts will protect your work even though it is only slightly different from an earlier work so long as it reflect some minimal level of creativity

C. When a Work Is Protected

A work is protected by copyright as soon as it is fixed in a tangible medium for more than a few seconds. You don’t have to do anything more to gain protection but I will talk a bit later about some added steps you should take to increase your protection.

D. Your Publishing Agreement

Let’s now assume you have created a copyrightable work, how do you monetize and protect that work.

I begin with your publishing contract and will focus on 8 key provisions in that agreement.

1. Grant of Rights from You to the Publisher

The grant of rights you give to your publisher is probably the most important provision in your agreement.

Here is the context in which you will exercise that grant. You own the copyright to your manuscript and you should always retain that copyright. Your copyright consists of a bundle of rights. You can give the publisher some or all of those rights. Most publishers will insist on having exclusive US print and electronic or e-book rights for at least for a reasonable period of time. All other rights are negotiable.

Your other rights include foreign, paperback, book club, web,  film, reprint, audio, video, drama, rental, pay-per-view and derivative.

Your decision which rights to keep and which to transfer to your publisher is an economic one. You need to ask yourself, if I retain certain rights, can I exploit them. For example, there may be no reason for you to keep foreign rights if you have no existing foreign publishing relationships.

With the rise of CDs, DVDs, iPods, iPads, iPhones and e-books publishers will also want you to agree to a new use clause. It provides that your publisher may use your work in all media now known or later developed. But that clause has a long tail and will allow the publisher to include your work in whatever new digital products Silicon Valley creates for years to come.

You can parcel these rights out to different entities but you may confuse consumers if they have to buy the audio of your play from one vendor and the video of the play from another. And because you will retain the copyright to your work, once your publishing agreement ends or you terminate it, you will be free to enter into any other agreement with any other publisher you wish.

2. Term of Grant

Most publishers will want print rights “during the full term of copyright and any extensions.” What does that mean?

The term of copyright is long: the life of the author plus 70 years after the author’s death. That period will most likely be longer than the book will ever be in print.

Therefore you may want to negotiate a much shorter term; maybe one that automatically renews but that you can terminate after a few years of sales when the publisher has had a chance to recoup its investment.

3. The Author’s Responsibilities

Make sure the contract clearly spells out your responsibilities as author; the contract should contain language such as this: “author must submit a final manuscript of ___ words by ___ date plus the following supplementary or illustrative material.”

4. Publication Date

The date should also be spelled out. You should set a time limit for publication so that your publisher does not let your book sit on its shelf unpublished The clause should read something like this: Publisher shall publish the book within ___ months after publisher approves final manuscript or all rights revert back to the author.

5. Royalties

They are usually a % of either retail price or some other number sometimes defined as dollar receipts; royalties vary depending on the rights sold; for example the hardback version of your book will generate a royalty of approximately 15% compared with a 7.5% royalty for the paperback version.

E-book royalties are higher than print because e-book publishing costs are so much lower. There are, for example, no delivery or storage costs associated with e-books. Therefore, publishers of e-books are now offering royalties of 25% or higher of retail receipts.

Because of the fluidity of the e-book marketplace, you may want to reserve the right to renegotiate your e-book royalty every few years.

6. The Advance

Advances, especially for a 1st time author are much harder to obtain these days. If you are fortunate to negotiate one, your publisher will recoup the advance first from your royalty stream before you receive your 1st royalty check. The advance depends on several factors, including the size of the publisher, the market for the book and the track record of the author. It is usually paid in three installments, the 1st on signing the agreement, the second when you submit your rough draft and the balance when your publisher publishes your manuscript.

7. Warranties

The publisher will require that you agree or “warrant” that your work is your own and does not infringe anyone else’s work. If you have included others’ copyrighted excerpts, illustrations or graphics, you will 1s need to obtain their permission and you will need to warrant that you have done so.

The only instance when you do not need permission to incorporate another’s copyrighted work into your own is when you are making fair use of another’s work. But predicting a fair use outcome is not for the faint of heart. That is because fair use is highly fact-specific and context-dependent. The likelihood of fair use increases if you use another’s work in your own for certain favored purposes like criticism, comment, parody, news reporting, scholarship or research.

Here is an example of a fair use parody draw from the case of Mattel v. Walking Mountain. Mr. Forsythe created some photos called Food Chain Barbie to criticize the objectification of women. His photos show the dolls in imaginative and often sexualized positions. The photos generated only $3,600 in revenues but Mattel sued his company Walking Mountain anyway. Mattel lost, the court finding his photos fair use parody. Mattel was then ordered to pay Mr. Forsythe’s legal fees of $1.8 million. I talked with him; he proudly told me he was paid

You will also warrant in your agreement that your work does not infringe the trademark rights of another; that it does not violate the privacy rights or publicity rights of others and that it is not defamatory.

Even if you are writing fiction, it’s important that you respect the rights of individuals or corporations who may be identifiable in your manuscript. If your book harms their reputation, they have the right to sue you for defamation.

8. Indemnification

In publishing, the “indemnities” clause always follows a “warranties” clause. The indemnities clause means that, should someone claim that your work infringes their rights, is defamatory or injures them in any way, you will be responsible for paying whatever damages are assessed and legal fees incurred. The damages and fees could be substantial.

E. Protecting Your Work

Now let’s talk about protecting your work; here are some suggestions.

First, you should place a copyright notice on all your works. That notice consists of 3 elements: the copyright symbol, the year you created the work and your name. The notice is like the nameplate on the door of your house or apartment; the copyright notice tells the world that this property is yours and prevents an infringer from later claiming it copied your work innocently.

Second, you should register your work with the Copyright Office. You can register online and the fee is only $35. The forms are available on the Copyright Office’s website at http://www.copyright.gov. See the Copyright Office website for more details or call the Copyright Office’s Helpline at (202) 707-5959.

Registration gives you the right to increased or what are called statutory damages if your work has been infringed. That right can be a powerful negotiation club when dealing with an infringer and can help lead to a quick settlement. But you have to register your copyrighted work either before it was infringed or, if infringed, within 3 months from the 1st publication of your work.

Third you may be able to enlist your publisher to sue infringers as John Wiley has recently done when it sued some 27 Bit Torrent users last month. Bit Torrent is a peer-to-peer communications protocol for file sharing that is a favorite of infringers.  John Wiley’s complaint is here.

F. Suggestions for Monitoring Your Work to Avoid Infringement

You also need to monitor your work to insure that it has not been infringed. With new social media sites created nearly every week, monitoring your work is difficult if not impossible. But here are some suggestions.

There are certain sites that welcome pirated material. Aptly named Pirate Bay is one. You need to visit those sites periodically to ensure they do not contain your works.

Next you may want to create a Google alert for all your book titles so that you are notified whenever one of your titles appears on a site where it does not belong.

In addition, you may also want to take advantage of the terms of service that each site offers. The home page of most sites contains links to those terms that almost no one ever reads. But Facebook and most of the rest of the social media sites don’t want to host infringing material and will take it down on request. So use the online forms those sites provide to notify them if an infringing copy of your book appears on that site. See for instance http://www.facebook.com/legal/copyright.php?howto_report.

Further, create a form take down notice that you can send to any Internet Service Providers like YouTube or Amazon that is hosting an infringing copy of your work.

That notice should contain the name of the sender, the name of the copyright holder, the url where the work may be found, your statement that the use on the ISP’s site is not authorized, a description of the work (photo, book, etc.) and a signed statement that you believe the information on the take down notice to be accurate. The ISP who receives that notice is required to expeditiously take down your work.

But there is one more consideration to be aware of in the digital world we now live in. We are all publishers; we can reach a global audience with a 140 character tweet. So you may want to pick your fights. If you are seen are overreacting in response to infringement, others could use the power of the Internet to turn the attack against you as a former Congressman from NY recently experienced. And once an attack goes viral it is almost impossible to stop it.

G. Dealing with E-book Piracy

E-book publishing is soaring. In 2010, publishers reported that 8.3 % of domestic net sales came from e-books; in 2011, Simon and Schuster’s e-book sales climbed to 17 percent of revenue and at Hachette, the parent company of Little, Brown, the figure was 22 percent. It is quite possible that e-book sales will overtake print sales in a few years.

Why will e-book piracy also grow? First e-book piracy is easy; all you have do is buy a single printed copy of the book, disassemble it and scan the individual pages into a computer and you have made a pirated copy which you can then sell online to others at a fraction of its retail price. Second a significant percentage of the population believes there is nothing wrong with piracy. Third the Bit Torrent sites, where copyrighted works are freely shared, are becoming even more popular.

So how do you protect yourself?  There is no panacea. You may want to try to protect your works with digital rights management or DRM. DRM describes technology that controls access to copyrighted material. For instance, DRM software will allow you to program your e-book server so that it restricts access, copying and printing of your material based on conditions you create. The problem with DRM is that it often sets up an adversarial relationship between digital-content providers and digital-content consumers who are frustrated at the controls imposed on their use of your copyrighted works.

H. Has Your Work Been Infringed?

 Lastly let’s focus on what is infringement. Your work will be infringed if another with access to your work creates a new work that is substantially similar to yours.

What do I mean by substantially similar? That is another fact specific inquiry. Without referring to the works in question, it is almost always impossible to say whether the defendant took too much of the plaintiff’s work.

But here are some guidelines. Courts when determining whether two literary works are substantially similar generally analyze seven elements: plot/sequence of events, dialogue, characters, theme, mood, setting and pace as well as the overall impression created by the works. No one element will control but plot/sequence, dialogue and characters often seem to be the most influential.

But even though two works can have similar plot lines a court will not necessarily find them to be substantially similar. For example, as Eric Osterberg suggests in his fine book, Substantial Similarity in Copyright Litigation, Shakespeare’s play Romeo and Juliet and Leonard Bernstein’s West Side Story both tell a story of forbidden love with parallel obstacles that lead to the death of one of the lovers. But their different plot details end any possibility of a substantially similar finding.

Let me give you one other example involving photographs so you can see strong evidence of substantial similarity sufficient to deny defendant’s motion for summary judgment.

The example is drawn from the case of Fournier v McCann Erickson. In this case, McCann on behalf of Microsoft conceived an ad campaign for Windows 2000 with the tag line “the old rules of business no longer apply.” McCann then asked Mr. Fournier to create some photos reflecting that idea. He submitted about 200 shots to McCann. When he and McCann could not come to terms on the price he was to be paid, McCann turned to another photographer who created what Fournier considered to be a similar photo embodying Fournier’s expression of the idea underlying the photos. Fournier then sued and in response the defendants asked the court to dismiss the court. The court refused finding a number of similarities in the two photos. Here are the photos with Fournier’s on the left:

a. both photos use a background bordered by structures with imposing columns on one side and buildings on the other;

b. the poses of the models are similar; plaintiff’s photo depicts a commuter casually dressed in a reddish-orange polo shirt with border

stripes on the sleeves and collar; defendant also shows a young man in a slightly brighter orange polo shirt with marginally different stripe patterns;

c. the models carry similar leather bags that are variants of the traditional briefcase;

d. the models are tightly flanked, although in varying degrees, by businessmen in traditional suits.

e. A balding, well-dressed businessman appears in both pictures directly to the right of the model; and

e. the angles, although not identical, are also similar. The casually dressed commuter is the central figure in both works, occupying the position closest to the photographer. The other models are situated slightly ahead of the central figure.

IP protection is not easily attained; but consider the alternative. Please share your stories/experiences in protecting your work and in negotiating publishing agreements.  For my PowerPoint for this talk, click here.

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