Intellectual Property Rights

With Bob Cumbow

Day of Meeting: September 13, 2009

Speaker: Bob Cumbow, intellectual property attorney with Graham and Dunn and volunteer for Washington Lawyers for the Arts

Book publishing Agreements: Clauses they Contain

Author Contracts

Copyright ownership and license agreement—Most often, the author owns copyright; for certain types of publications (textbooks, reference materials), copyright belongs to the publisher.

“Next book” clause—look for it, e.g., publisher’s right of first refusal on next book of similar type.

“Cross­collateralization”—publisher seeks to recover any losses from your first book with your second book’s royalties. (Watch out for this one; it rarely benefits the author)

Royalty reports—when you’ll be paid and if an advance comes out of that

Other rights—film, translation, serial, electronic—can be assigned (permanent while the work is “in print”) or licensed (temporary)

Audit rights for the publisher’s bookkeeping—Author has the right to inspect the books of the publishing company each reporting period (typically once a year) at author’s expense. An author should retain this right and add a clause that if the audit results in a discovery that the publisher’s report is wrong by a certain margin (usually 5–10 percent), the publisher will pay for the audit.

“Out of print” clause, now often phrased as “commercially available”—definition and the time period before the book is considered out of print, and the requirements that must be met for the author to regain the rights

Termination clause—usually favors the publisher strongly.

Bob estimates that almost half of any contract is negotiable. Many publishers’ contracts are full of boilerplate copy that does not pertain to every situation. He advises us to have a lawyer review a
contract for red flags, or you can read the whole thing carefully yourself and bring specific questions to the lawyer. But do your own negotiation.

Personal services contracts

  • Deliverables
  • Schedule
  • Payment and timing
  • Termination
  • Breach provision—A breach is failing to fulfill a material condition of the agreement, and each party is given time to “cure” the breach before the contract is considered void.
  • Ownership of copyright—assumed to be the author if not stated
  • Work-­for-­hire provision

Bob mentioned that for #6 and #7 to be valid, they must be signed, and that states vary on their e-signature law. An audience member commented that you can sign your own paper copy of the contract, mail that to the client, and have them sign, scan, and return it to you via fax or a PDF file.

Who is legally liable for copyright infringement?

Primary: direct copying
Contributory: facilitating (often providing the means of) direct infringement—e.g., providing a forum for sharing copyrighted files
Vicarious: knowingly profiting from infringement—e.g., flea market owner with one stall selling pirated goods

Within publishing there’s publisher vs. distributor liability. Publisher (and occasionally editor) has creative control of content, whereas distributor is not liable for content. To protect themselves from copyright infringement, editors need a contract in which the client/author represents that the work is original and that s/he indemnifies the editor (which means that the author/client will pay any damages in a lawsuit). Even with this stated, there can be joint and several liability, so you may want the author to expressly state that s/he carries sufficient insurance.

In discussion, people brought up that you can save your red-lined copy to document any advice you gave and corrections you made that weren’t taken.

Is it OK to include client’s work in an editor’s online portfolio?

Make this a contract term: the author will want attribution and copyright. This can be considered fair use.

A fair use analysis has four factors:

  • Nature of use (commercial or educational?)
  • Nature of work (creative or factual?)
  • Amount and substantiality of the work used
  • Effect of use on market for the original (does it replace the original, or does it have no effect on the
    original?

Bob advises us that publishers “don’t want to hear about fair use”—they want all rights cleared prior to publication. Authors and editors who want to work with publishers will need to comply with their policies.

Public Domain

Anything published prior to 1923 is in public domain.

Works published between 1923 and 1978 may or may not be copyright protected—it depends on the terms and whether the copyright was renewed. (It’s best to assume that works from this time frame are copyright protected.) Works published after 1978 are automatically copyright protected.

Delinquency

Can be due to individual or corporate bankruptcy, or because you don’t deliver on the terms of the contract. Make sure you include a contract provision for advance payment and/or installments so you’ll get at least some of your money. You can place a lien on the client’s property if they don’t pay. Or you can take the issue to small claims court, as long as it’s not for more than $5,000. (That’s the limit in King County, WA; other jurisdictions may have other limits.)

Resources

One audience member shared some books from her library, which Bob confirmed are trusted resources:

Fishman, Stephen. The Copyright Handbook. Berkeley, CA: Nolo, 2008.
Fishman, Stephen. The Public Domain. Berkeley, CA: Nolo, 2008.
Stim, Richard. Getting Permission. Berkeley, CA: Nolo, 2007.
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Notes by: Susan Hodges and Beth Chapple

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