Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

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.)

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. 

Still Lifes. As for your "still life" concept, the safest course is to get permission for the book cover art. At the same time, if someone says no, or you can't locate the owner, you can probably get by without permission. You have a strong argument that your work is transformative and constitutes fair use. BTW, the Dear Rich Staff isn't sure what you mean when you write of using "artwork by artists who illustrated the book(s)." If you have their permission for the  additional art, great. Otherwise, you might be pushing the fair use boundaries by reproducing non-cover illustrations.

To learn more about trademark laws, see my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference.

Facts. Facts. It's true that copyright doesn't protect facts but dictionary publishers would argue that writing dictionary definitions requires skill and unique phrasing. Even in those cases, when a definition is too short, or doesn't involve sufficient creativity, or is in the public domain, such definitions can still be protected as a group under the compilation copyright (and we assume that "compiling" a dictionary is different than having it "complied" -- see our cover above). As for linking to the online dictionary, that's a tough call. Like inlining or framing, it may be considered a copyright infringement. The university may also have a claim against you for unfair competition or similar statutes which make it illegal to pass off your work as that of someone else's. The real problem is more of a practical one -- whether you want a self contained app (that can also run on an iPod Touch without wifi) or one that is link-dependent.  As for international copyright rules, if the copyright is valid in a country that is a party to an international treaty, it can be enforced against you in the U.S. 

The party line on audiobooks is that a publisher usually sells one audiobook for every 10 print copies (sometimes the ratio is lower). So if your book sells 5,000 copies in its first year, it might not be commercially reasonable to produce an audiobook (at a cost between $2,000 to $10,000) if it will only sell 500 copies. It's possible -- though not likely -- that your contract will have a " use it or lose it" provision that says something to effect that if, after a certain amount of time, the company has not exercised certain rights, those rights revert to you -- for example audiobook rights. So look for any reversion clauses.

Okay, so let's assume that the author files a lawsuit. Your publisher -- assuming you were lucky enough to find one in these troublesome days of publishing -- (or your publisher's insurer) would likely ask you to pay the costs of the lawsuit based on the indemnity provision in your contract. So even if you win the lawsuit -- or you settle as they did in this case -- you probably will have given up most of your royalties to pay the attorneys. And if you lose the lawsuit, -- as in this case -- then you pay the attorneys, and your book goes unpublished. 

Okay, now for the fine print. Is it legally permissible to borrow? Maybe. Some plots -- boy meets girl, boy loses girl, boy gets girl -- and some characters -- good cop, bad cop -- are so stock, that they are considered merely "ideas," not original expressions -- a theory best expressed in this case. In other cases, the author may create something transformative that qualifies as a fair use. (Keep in mind these are issues raised at trial, so the attorney is billing as you prove your point.) There are many cases on the subject of borrowing plot and characters and you may want to peruse a copyright treatise before penning your opus. And of course, as always, disregard all of the legal blather, above, if the book or character you are copying -- for example, Sherlock Holmes --  is in the public domain.

Dear Rich: I have to file a pro se case against an author using my mark in the title of her new book (yet to be published, but much publicized). Can I file for injunctive relief against her publisher, agent, publicist and her all at the same time or would I just file against the publisher? The short answer is that you should only seek an injunction against somebody who is about to cause you immediate harm that cannot be repaired and for which money won't compensate you. So, you'll have to figure out who, amongst your candidates, fits that bill. (We assume you're referring to a preliminary injunction -- an order granted before the trial occurs.) Even if you can prove under trademark law that the use of the mark in the book title is likely to confuse consumers -- and that could be a tough claim to prove -- it doesn't mean that anyone caused you harm that is "irreparable." You're going to have to show up in court and make a strong showing that you're likely to prevail at trial and that if the book is published you're going to really take a serious financial hit. That's a tough argument to win if you haven't made much money with the mark in the past, for example. Since you're already headed uphill as a pro se litigant, the Dear Rich Staff thinks you might want to simplify your litigation by striking the request for a preliminary injunction. Keep in mind that if you lose the battle over the injunction, you're in a very poor strategic place heading for trial. And if you win the battle, the court may require you to post a bond to compensate the publisher for any harm caused by the injunction (in the event that you later lose the case). Ouch!