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March 1, 2010

Optioning Theatrical Rights From Heirs

theater.jpgDear Rich: I'm optioning theatrical rights from an author's heirs. I'm using a boilerplate option contract to option the rights. Before I enter into the contract, should the heirs have to provide right of title from the Copyright Office and proof of ownership? We don't know what language is included in your option agreement -- the Dear Rich Staff finds 'boilerplate' to be a deceptive term (with even more deceptive origins). However, you're on the right track by wanting some form of assurance or verification.
Good title; bad title. How do you verify that someone owns copyright? You can start by searching Copyright Office records, or you can hire a search company to research the copyright history. Search results, alas, are not always conclusive. The heirs may not yet have registered ownership in their name, may not have filed documentation evidencing the transfer, or they may have filed documents that have not yet been recorded. There is also the possibility that the records reflect that the heirs own copyright ... but don't reflect the fact that they have since transferred rights.  Finally, the heirs may have provided incorrect information to the Copyright Office. A registration doesn't verify that the person owns the copyright; it creates a presumption that the person owns it. 
Assurances. So, a wise approach may be to research on your own and to also seek assurances in your option agreement. You can include warranties -- guarantees as to representations of fact -- and indemnities -- promises to pay for all damages and costs if a third-party sues over the ownership issue. At the absolute minimum your option agreement must include a warranty from the heirs that they have the power and authority to enter into the option agreement. You can also ask that the heirs provide you with documentation from the Copyright Office evidencing ownership  (that may require them to file documents) and you may also seek other proof of the transfer -- a copy of the will, an opinion letter from the attorney, or documentation from the probate court. 
Wild card department. Though it's probably not an issue, it may matter whether the work falls under the 1909 Act or the 1976 Act (effective January 1, 1978). This could affect the rights of the heirs to terminate previously existing transfers of ownership. It's confusing stuff and a lawyer's assistance may be required.

Posted by Rich Stim | | Email This Post

Posted In: assignment , copyright , joint ownership , licenses , permission , theater

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February 17, 2010

Searching for Misplaced Movie Rights

Refrigerator.jpgDear Rich: I want to adapt an out of print children's novel from 1971 into a screenplay. However, when I tracked down the last known rights holder, a notable book publisher, I was informed that they simply lost/misplaced the film rights. They assured me that they would let me know if they found them, and that was three years ago. I plan on restarting the process again, but what is my next logical step if I reach the same dead end? Is it game over? The publisher who "misplaced" the movie rights ...did they look behind the refrigerator? Sometimes stuff falls behind the file cabinets, too. And once the Dear Rich Staff found an unopened container of Desenex way in the back of a desk drawer.
Losing the movie rights. Of course movie rights are not exactly the same as anti-fungal powder so we're a little confused by the publisher's response. We assume they meant that they lost some document since the rights are intangible. But what document could they have lost? The original publishing agreement may have spelled out who owns the movie rights. But if the book is out of print, chances are very good that the publisher no longer has any rights and that all rights reverted to the author. Publishing contracts form the 1970s often had "use it or lose it" provisions in which rights reverted if they were unexploited. Similarly, if the publisher assigned the movie rights to another entity -- usually as an option agreement -- there's a good chance that's expired and reverted as well. 
Who's got the rights? Our guess -- and it's just a guess-- is that after forty years, all of the rights (including movie rights) reverted to the author. If the author is deceased, it went to the author's estate. You should contact relatives of the author to find out if they have a copy of the original publishing agreement. (That would spell out who initially controlled the movie rights.) If the author had an agent, perhaps that person can locate the contract. There are also pricey services that will provide a copyright search of titles. And of course, there are personal search services that can locate people. (The Dear Rich Staff used to use them to find absentee landlords whose tenants had frontal lobe problems.)

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Posted In: assignment , books , derivative , movies , permission

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November 11, 2009

Letters to the Editor: Who Owns the Rights?

letter.jpgDear Rich: I am a contributor to Wikisource and our task is to reproduce public domain books, documents, etc. A question came up about the definition and copyright status of newspaper's "Letters to the Editor" and what are often defined as "Open Letters." I was wondering whether you are aware of any guidance or directions on such material. Who would hold the copyright? Is copyright ceded from the author to the newspaper publisher? As a general rule -- boy we hate to start with that phrase -- letters are literary works and the author retains copyright. Unless (a) published before 1923, (b) published before 1964 but not renewed or (c) dedicated to the public, the letters are not in the public domain. 
What's unique about letters? By their nature letters must be given to someone else -- in this case, the newspaper publisher. That doesn't automatically transfer copyright ownership; it just transfers ownership of the physical letter. According to the Dear Rich Staff, it's possible that a publisher would acquire copyright under a written agreement or, in the case of an online publication, a click-to-agree agreement transferring rights. Check the fine print in the publication. Otherwise (and unless excused by fair use), the letter writer can prevent duplication or further publication.

To learn more about copyright law, see Stephen Fishman's The Copyright Handbook: What Every Writer Needs to Know.

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Posted In: assignment , copyright

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October 14, 2009

Who Gives Permission -- the Publisher or the Author?

dickens_oliver_twist.gifDear Rich: I work for a small non-profit with offices in the UK and California. Our mission concerns the protection of both biological and cultural diversity. In an effort to fulfill this mission, our group created a community study program that includes a reader featuring works written by leading ecological scholars and activists. We're updating the curriculum and most of the authors have agreed enthusiastically to let us use their material for free. However, a few of them do not hold rights to their work and the publishers are asking for fees that are prohibitive. We're trying to find substitutes. Do we need to get both the authors' and the publishers' permission if the books attribute copyright only to the authors?The short answer is that the copyright owner is usually -- but not always -- the person to give permission. The reason we need to provide a longer answer is that often the author retains copyright ownership but grants exclusive rights to a publisher. So even though the book's title page says Copyright 2009 Dear Rich, the publisher still controls all rights and can even file an application for copyright registration as the owner of those exclusive rights.
How can you tell who owns what? Usually, you need to ask the publisher. As a very general rule, authors of articles in scholarly journals and other periodical publications traditionally retain subsequent print publication rights. Also, as a general rule, most authors of books do not control the right to copy portions of their published books since print reproduction rights is one of the exclusive rights universally granted to book publishers. (Note, in the event that the publisher stops selling the book, these rights commonly revert to the author -- or at least they used to in the old days of publishing ...). So even though the author may be enthusiastic about including the work (and may be listed as copyright owner), the publisher may be the one who has to okay the use.
We support your work and wish publishers would support it too (instead of making you beg like Oliver Twist). If the Dear Rich Staff  made more money we would shovel it towards our favorite conservation nonprofit located in the nearby (and beautifully named) town of Petaluma.

Want to learn more about who can give permission? See my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off. 

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Posted In: assignment , books , contracts , permission

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October 12, 2009

Till Copyright Do Us Part

iStock_000000934163XSmall.jpgDear Rich: For my daughter's wedding this past August we hired a photographer that relinquishes all copyrights to the photos. The package deal that we chose gave us a DVD album of the some 300+ photos that he took of the bride and groom with an additional 40+ photos of friends and family as we left the church. As parents of the bride we chose the photographer and package deal for the wedding and paid for it. I feel that we now own the pictures and do not have an obligation, moral or otherwise, to make a copy of the DVDs to hand over to the groom's parents. Nor should I feel bad that we did not hire the photographer to do extended family sittings - we paid only for an extended bride and groom photo shoot. The photographer has posted all the pictures he gave us on his web site and his prices for printing up the photos is very reasonable. My question is an etiquette question. Is it wrong to ask the groom's parents to pay for a copy of the DVDs that the photographer delivered to us? I would like to ask the groom's parents to pay about 20% of the total cost of the photographer. The Dear Rich Staff is thrilled to have been asked an etiquette question. On the other hand, we're a bit distressed to note that somebody's marriage is starting out with the in-laws bickering over photo reproduction rights. 
We're hung up about who owns the copyright in the wedding photos. You say the photographer "relinquished" the copyright. Did he assign the rights to you? If so, why is he posting the photos and selling prints? We have a feeling he didn't assign copyright and that's why he can still post and sell the pictures. If we're right and the photographer still owns the copyright, then you have the perfect (and most pathetic) excuse for not duplicating the DVD -- you could be sued for copyright infringement. 
For the sake of the happy couple. We're not sure how you arrived at the 20% figure but we wish this matter had been discussed before hostage negotiations were commenced over the  wedding DVD. Regardless of who owns the copyright, we hope you follow Dr. Phil's advice (See #4) and we also suggest that you consult with the bride and groom before making any decisions (as they are the ones who will suffer the most from any resulting squabbles).

There's more information about copyrights in my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.

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Posted In: assignment , copyright , photography

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September 23, 2009

She's Afraid of Assignment Reversion

Dear Rich: I was artist/writer of a series on which the contract clearly reserved all rights to me. I signed this contract when I was a teen. My editor (who was also my publisher) decided my writing could use some revision, and took it upon himself to rewrite. When the book was published, the script was credited entirely to him, which was false.  Within a couple of issues, the indicia of my book indicated fewer and fewer rights for me and more for the company, with the copyright switching to half company ownership and half trademark ownership. My contract didn't even mention trademark, and it clearly stated that the work was to be copyrighted in my name. After a bitter argument, my editor stopped rewriting my scripts, but still took credit for a couple more issues. The matter ended up in an ugly legal dispute with an out of court settlement. I retained all rights to my work, and the company/editor signed a release agreeing that I was the sole owner and sole creator of the work. Eventually, I rewrote and redrew my entire series from scratch and threw out everything the editor had touched. I filed trademark and copyright papers under my own name. The series is still in print. However, this was many years ago. I understand that a copyright assignment can revert and I am concerned that I will be fighting against a copyright reversion claim in a few years. Would he have a claim to my current series if he attempts to file for copyright reversion in a few years? Yes, it all happened that long ago! There's no short answer to your question; there's too many loose ends. We're confused about what we're dealing with -- a book, a magazine series, a script? -- and we're also unclear about the timing of things. But hey, we're often confused and that doesn't stop us! So here goes:
Assignment rules. There's a difference in the rules for assignments made before 1978 and after (it gets particularly complicated if it's pre-1978). These laws were intended to provide a means for copyright owners to terminate bad deals made years earlier. We're not clear how a judge would rule regarding the potential assignment reversion but based upon your facts, it seems contrary to the spirit of the law.  
The settlement. If a dispute does arise over an attempted rights reversion, the answers to your questions will likely come from a review of your settlement agreement -- that is, a judge or arbitrator may look to the settlement for guidance. If you can afford the fees, you could take a pre-emptive step and have the settlement agreement reviewed by an attorney. 
The new serial. It's difficult to see what rights the publisher could claim to your new series. Perhaps the editor could argue it's a derivative work and therefore the editor has rights on that basis. We think that's a difficult claim to pursue (given the facts presented here). 
Wildcard dept. There are also a couple of  wildcards. Apparently you're talking about a serialized work and it's not clear what elements of the serial are covered by your agreement and which ones are not -- that is, we assumed you continued to create new serial contributions after the settlement. It's also not clear who acquired trademark rights in the settlement. In summary, your situation may be too complicated to rely on the generalized analysis of the Dear Rich Staff; if this situation is creating anxiety, pick up the phone and call an attorney versed in copyright law.

Want to know more about copyright law? Take a look at my book Patent, Copyright & Trademark Law: An Intellectual Property Desk Reference.

Posted by Rich Stim | | Email This Post

Posted In: assignment , copyright , trademarks , transfers

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September 14, 2009

NDA or Preinvention Assignment?

frog.jpgDear Rich: I currently am working at a company that makes a product that I have no intrest in trying to make better. But they package this product with something that I have found a better way to do. I want to invent this product prototype but was informed that because I signed an NDA, if I take this idea out of the idea stage it would then belong to them!!! Is this true? My company is going out of business next year but the corporation is staying open under a different name out of the country. Does this make a difference? And they are keeping our company name as a brand. Is a nondisclosure agreement iron-clad or does an aspiring inventor have a chance to shine? I didn't realize that by signing an NDA, they could own innovations concepts and inventions. The thought of someone else owning my creative process is very scary to me. We're guessing that what you actually signed was a combo-agreement that had nondisclosure provisions and also gave your employer the rights to any inventions or copyrights created in the course of your employment (known as a preinvention assignment). Eight states have limitations on these agreements and in those states the employee will usually own non-work related innovations created without employer resources and on the employee's time. In general, if you signed a typical preinvention assignment your employer will own your work-related innovations. 
All that other stuff ...We're not sure what's going on with your company but assuming the assets are transferred to another entity, that new entity will step into the shoes of your employer and own everything you created. Practically, the new owners may not police the old agreements, or may not be aware of what you're doing, but under contract law, they could claim rights to it. The Dear RIch Staff reports that your predicament is standard, (and often a business necessity) for many innovative companies. And in these days of disappearing job opportunities, it's not likely to go away.
Even without the paperwork ... Regardless of whether you signed any paperwork, if you were employed for your innovation skills (or hired to create inventions), the employer would likely own what you create under the "employed to invent" doctrine. Alternatively, even if you weren't hired to invent, if you use the employer's resource (materials, supplies or time), the employer may obtain a royalty-free right to own your innovations under "shop-right" rules. In addition, whether or not you signed a nondisclosure agreement, you're bound under state laws to maintain an employer's trade secrets. (Sometimes, the rules expressed above are different for government and university employees.
Plunk Your Magic Twanger! What about this picture of a rare poisonous tree frog? Okay, it's not actually poisonous or a tree frog. In fact the only reason we're posting it is that istockphoto.com was offering it as a free download and we like the way the little guy looked. 

Posted by Rich Stim | | Email This Post

Posted In: assignment , copyright , employer , inventions , patents , trade secrets

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September 9, 2009

Podcast Release

interview.jpgDear Rich: I have a podcast series where I interview comic book artists, cartoonists, and graphic novelists. Do I need to get a written release from people I interview? Can they consent over the phone? Do I have to make a token payment? Yesterday, we announced that this was Audiobook Week. Then we looked into our grab bag of questions and realized we had to stretch the meaning of "audiobooks,"  -- hence this question about podcasts. Ennnyway, the short answer to your question is that if all you're doing is a typical podcast series -- for example, posting at the iTunes Store -- then recording a low-key permission request over the phone is fine (and be sure to save the resulting consent). Simply ask your interview subject, "Are you okay with me taping this interview and posting the result on the Internet as a podcast?" (Also, you don't need to pay for the release -- consideration will be presumed, as they say in the legal world.) 
When More is Needed ...
If you want more than the ability to post the podcast -- for example, the ability to transcribe and post the written version, you should ask for that, as well. If you're looking for extensive rights -- for example, you want to publish a book that compiles all your transcribed interviews, or you want to sell your interviews to a news website, then you should consider a written podcast release like the one we posted at Scribd (speaking of which we wish they'd stop posting our books illegally). The Dear Rich Staff believes this release will work for most purposes and it heads off any problems should an interview subject complain about your editing, as well.
And Speaking of Audiobooks
Okay, now it's time to talk audiobooks. Here are five narrators who never let us down: Edward Herrmann, Campbell Scott, Robert Forster, Will Patton, and Grover Gardner.

Want to know more about releases? Check out my book Getting Permission: How to License & Clear Copyrighted Materials Online & Off.

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Posted In: assignment , copyright , permission , transfers

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August 11, 2009

Can an Assignment Create a Work for Hire?

iStock_000001890637XSmall.jpgDear Rich: If I chose to completely assign my copyright in a personally created work of authorship to a sole proprietorship or single-shareholder S-corp -- with either of these businesses being owned exclusively by me -- would the copyrighted product be considered a work made for hire in determining the duration of its legal protection? The short answer to your question is "No." Just because a business acquires a copyright does not make it a work made for hire. The Dear Rich Staff reports that work made for hire status is determined by the original act of authorship -- that is, who is the author and under what conditions the work is created. If it was created by an employee within the course of employment or by an independent contractor (and it fulfills the IC work for hire requirements), it will be a work made for hire forever (or at least for the duration of copyright). In other words, authorship status travels with the copyright no matter who acquires it down the road.

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Posted In: assignment , copyright , duration , work made for hire

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