Tips for Negotiating a Book Contract

Asking an Attorney to Review a Book Contract

Book Contract Checklist of Deal Terms

Book contracts must be carefully negotiated to tailor the terms to fit each author's unique situation. They must address key issues such as the grant of rights, title approval, audit rights, termination clauses, royalties, and more. Further, how you, or your publishing attorney, define key terms and clauses are critical to minimizing the likelihood of disputes.  

In book publishing, unlike the film industry, the grant of rights is (or should be) narrow. In exchange for an advance against royalties, publishers receive the basic right to print and publish a manuscript in book form for the entire term of copyright.

Today, copyright lasts for seventy years beyond an author's passing. You might wonder, what could possibly go wrong? The answer: quite a lot. Just ask a publishing attorney. Without a properly negotiated book contract, potential pitfalls include: 

• no ability to reclaim your rights if the publisher fails to account
  
• no recourse to reclaim your rights if the publisher fails to publish or goes out of business
• no means to reclaim your rights for low or no sales
• no way to reclaim unexploited audiobook or foreign translation rights 
• no say in approving settlement of legal claims
• overly broad non-compete clauses
• restrictive option clauses that may be confused for a multi-book deal
  
• publisher rights grab of film, TV, theatre, and merch rights

Publishers are generally most open to accommodating requests for contract adjustments during the initial stages of the relationship, often referred to as the "romance" phase. Later is too late. Unless a book publishing contract allows an author to terminate for cause if the relationship goes awry, or rights are granted on a "use it or lose it" basis, the author is caught between bad and worse options - asking a court to rescind the contract (rescission is seldom granted) or waiting 35 years to exercise their right of termination under the Copyright Act. 

A Book Contract Should Not be Entered into Hastily

The primary purpose of a book contract is to detail the rights, delivery and acceptance conditions, payment terms, and remedies for breach of contract. For example, rather than relying on a lawsuit to get back rights, if a publisher fails to publish within a contractually agreed time limit, there should be a mechanism that permits an author to regain their rights. Similarly, if a publisher fails to exploit specific subsidiary rights (e.g., audiobook or foreign translation) within a reasonable time, it should trigger a reversion of those rights. In addition to reclaiming or recapturing rights, an author should reserve, or hold for their own use, film, television, live stage, podcast, and merchandise licensing rights. If a book publisher claims these rights, they deviate from industry norms. 

What to Expect When Expecting a Book Contract

Preceding the actual book contract is the term sheet. The term sheet contains the main deal terms. To decode a term sheet some authors turn to literary agents, who will receive a 15% commission on everything from books to audiobooks to film deals. Others retain flat or hourly fee book contract attorneys to help them negotiate royalty rates, the grant of rights, and, later, decipher the legal provisions found in the actual publishing contract.  

Initially, a publishing attorney will review the deal terms and make recommendations to their client. The initial task is to determine if the deal terms measure up to industry standards. We do this by comparing the terms to similar terms offered by similarly situated publishers for comparable books. After both parties agree to the deal terms, the publisher will prepare a contract incorporating those terms, plus the publisher's stock provisions. Like agents, attorneys are buffers that save you from dealing with the minutia of contract negotiation. They will help the client think through the offer and its possible ramifications and advise them on what is negotiable and what is not. An author's attorney can argue for the exclusion of certain items or rights from the proposed contract and the inclusion of others, such as naming the author as an additional insured on the publisher's media perils policy. 

It should come as no surprise that publishing contracts are chock full of double dips and legal loopholes, and when it comes to royalties, a hall of mirrors where what it says and what it means are often two different things. The big five New York publishers offer royalties based on the suggested retail price. Royalties for trade paperback books range from 7 - 7.5% of the list price on average. Typically, established publishers offer 10% of the list price for the first 5,000 hardcover copies sold, 12.5% on the next 5,000 sold, and 15% thereafter. Many smaller publishers base their royalty on the "net amount received," which may be 40% to 50% less than the retail price.  The standard eBook royalty rate offered by established publishers, and many independents, is 25% of the net.

Is Your Book Contract Signable?

When presented with the contract, you will want to modify specific terms.  In the case of a subject matter expert, business owner, or series author, you want title approval. Yet most stock contracts state the publisher decides the book's title.  Contract clauses are malleable, not words set in stone. A good publishing attorney - or agent- knows the contract managers at the major publishing houses. Logical arguments supporting rational positions and knowledge of industry practice are the underpinnings of most book contract negotiations.

Whether one of the big five New York publishing houses or one outside of the insular world of New York publishing, a well-drafted publishing contract can anticipate potential issues, reduce disputes, improve financial return, and save thousands of dollars in legal fees later on. 

Benefits of Reviewing a Signed Agreement with a Publishing Lawyer

For those who have already signed a publishing agreement, a publishing attorney or literary lawyer can help you understand the deal's limitations and determine if those limitations are enforceable. For example, a publishing attorney can advise whether a next book option is enforceable or simply an unenforceable agreement to agree. For example, a common concern is whether a non-compete clause can prevent an author from writing a new book on a related topic. Similarly, a publishing attorney can advise on termination for cause options or termination as a matter of right under the Copyright Act.  

Tip. If chomping at the bit to sign a contract but cannot afford to hire a lawyer, visit Victoria Strauss' Writer Beware blog - a beacon of light in the "shadow-world of literary scams, schemes, and pitfalls." Writer Beware doesn't offer legal advice, but it does a stellar job exposing and raising awareness of questionable business practices in the world of books and authors.     

Book Publishing Contract Checklist

Below are matters to consider when you draft or negotiate your next publishing agreement. Each key point deserves greater attention than given here (and will be the subject of future blog posts). While not all clauses are equally important (or negotiable), a well-drafted contract will cover all or most of the points outlined below.

I.   General Provisions
      1. Name/address of parties
      2. Description of work (synopsis)
          -Tentative title, # of words, illos, intended audience, fiction, non-fiction, etc.

II.  Grant of Rights and Territory
      1. Is it an assignment of "all rights" or a license agreement?
      2. Duration (term of years or life of the copyright?)
      3. Geographic scope
           a)     The world?
           b)     Limited (e.g., the U.S., its possessions, and Canada)
      4. Exclusive rights granted
           a)     Primary rights
                  -Hardcover
                  -Trade paperback
                  -Mass market
           b)     Secondary (subsidiary rights)
                   -First serial (pre-pub excerpts)
                   -Second serial (post-pub excepts)
                  -Reprint rights
                  -Dramatic rights
                  -Film/TV rights
                  -Audiobooks    

                  -Foreign translation

                  -British Commonwealth rights

II.   Manuscript Delivery
      1. Delivery requirements
          a) When due? Is the date realistic? Time is of the essence?
          b) What format? 
          c) What to deliver?
                -Rights cleared photos, illos, charts?  Illos? Charts? 
                -Permission & Release

      2. Manuscript Acceptance

          a) Satisfactory in "form and content" or at "sole discretion" of                      the publisher? 
          b) Termination for unsatisfactory manuscript
          c) Termination for changed market conditions
          d) How is the notice of acceptance or dissatisfaction given
          e) Good faith duty to edit
          f) Return of the author's advance
                 -First proceeds clause
                 -False first proceeds clause

III. Copyright Ownership
      1. In whose name will the work be registered?
      2. Who will register the work with the Copyright Office? 
      3. Is there a signed collaboration or ghostwriter agreement? 
      4. The scope of permissions should parallel rights granted publisher
      5. Reserved rights (i.e., rights retained by the author)

IV. Author’s Representations & Warranties
      1. Author sole creator
      2. Not previously published; not in the public domain
      3. Does not infringe any copyrights
      4. Does not invade the right of privacy or publicity
      5. Not libelous or obscene
      6. No errors or omissions in any recipe, formula, or instructions
      7. Limited only to material delivered by the Author

V. Indemnity & Insurance Provisions
      1. Author indemnifies the publisher
      2. Does indemnity apply to claims and breaches?
      3. Can the publisher withhold legal expenses? If so, for how long?   
      4. Has the author been added as an additional insured to media perils policy?
      5. Does the author have approval over the settlement of claims?  

VI. Publication
      1. Duty to Publish within [insert number] months
          a) Force majeure (acts of god)
                 - Any cap on delays?
      2. Advertising and promotion
      3. Right to use author's approved name and likeness
      4. Advance Readers Copies - MUST be sent 3-4 months before pub date
      5. Style or manner of publication
          a) Book Title - Right of consultation or approval?
          b) Book jacket - Right of consultation? Approval?
          c) Changes in manuscript
      6. Initial publication by a specific imprint in a particular format? 

V. Money Issues
      1. Advance against future royalties
      2. When payable? (in halves, thirds, etc.)
      3. Royalties and subsidiary rights:
          a) Primary rights
                 -Hardcover royalties
                 -Trade paperback royalties
                 -Mass market royalties
                 -Ebook royalties
                 -Royalty escalation(s)
                 -Bestseller bonus
                 -Royalty reductions
                  1) deep discount and special sales
                  2) mail order sales
                  3) premium sales
                  4) small printing
                  5) slow moving inventory

          b) Secondary (subsidiary) rights royalty splits
                 -Book club (sales from publisher’s inventory v. licensing rights)
                 -Serialization (first serial, second serial)
                 -Anthologies, selection rights
                 -Large print editions
                 -Hardcover
                 -Trade paperback
                 -Mass market
                 -Foreign translation
                 -British Commonwealth
                 -Future technology rights
.                -Database rights 
                 -Audio rights
                 -Motion picture/TV
                 -Merchandising

      4. Reasonable reserve for returns
          a) What percentage will be withheld?
          b) When liquidated?

      5. What is royalty based on? (retail price? wholesale price? net price?)
          a) At average discount of 50%, 20% of net is same as 10% of list
          b) At average discount of 40%, 16-2/3% of net is same as 10% of list
          c) At average discount of 20%, 12-1/2% of net is the same as 10% of list
      6. Recoupment of advances

VI. Accounting Statements
      1. Annual, semiannual, or quarterly statements
      2. Payment dates
      3. Can the publisher recoup an outstanding advance from the next book?
      4. Does the contract afford author audit rights? 
      5. Limit on time to object to statements
      6. Limit on time to bring legal action
      7. Can you hire a forensic accountant to review books on a contingency basis?
      8. Pass through clause for subsidiary rights income
      9. If the publisher fails to account, can you terminate the contract? 

VII. Revised Editions
      1. Frequency
      2. By whom?
      3. Can they reduce your royalty if you don't participate in a revision? 
      4. Sale of a revised edition treated as the sale of a new book?
      5. Reviser credit (May the original author remove their name?)

VIII. Option
      1. Definition of next work
      2. When does the option period start?
      3. Definiteness of terms (i.e., is the option legally enforceable?)
      4. What type of option? (e.g., first look, matching, topping?)

IX. Competing Works & Morality Clauses
      1. How is competing work defined?
      2. How long does the non-compete run?
      3. Are there adequate exclusions from what constitutes a competing work?

X. Out-of-Print
      1. How defined?
      2. Notice requirements
      3. Author's right to purchase plates, film, inventory

XI. Termination
      1. What triggers the reversion of rights?
          a) Failure to publish within 12 (or 18) months of manuscript acceptance
          b) Failure to account to the author after due notice
          c) Failure to keep the book in print (see Section X)
      2. Survival of Author's representations and warranties
      3. Licenses granted before termination survive?

       TIP. Pay attention to what triggers the duty to return the advance?  

XII. Miscellaneous
      1. Choice of governing law
      2. Mediation / Arbitration clauses
      3. Bankruptcy
      4. Modification
      5. Literary agent clause 

###

 

Illustration: from Lawton Mackall's Bizarre 

Illustrator: Lauren Stout

Date: 1922

Related Blog Posts

Libel in Fiction

Fair Use in a Nutshell 

Twelve Copyright Permission Myths  

Estate Planning for Authors 

DISCLAIMER / TERMS OF USE

Not Legal Advice. The information contained in this blog is intended as general advice. Because the law is not static, and one situation may differ from the next, we cannot assume responsibility for any actions taken based on information published here. Be aware that the law may vary from state to state. Therefore, this blog cannot replace the advice of an experienced attorney. No attorney-client relationship is created by your access to or use of this website.   Contacting us by email does not create an attorney-client relationship. If you wish to establish a professional relationship, it must be done through a mutual agreement in writing. Please do not send us any confidential information until an attorney-client relationship has been established.

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A Writer's Guide to Copyright Fair Use

Fair Use Uses a Four Part Balancing Test

Fair use allows authors and other creators to make reasonable use of copyrighted material without paying a fee. It functions as a free expression safety valve by allowing authors to make statements about important societal issues. Without it, copyright owners could squash criticism, commentary, news reporting, scholarship, and even research they didn't like or approve of.

Understanding Fair Use

Fair use is a defense against copyright infringement. Courts favor uses that challenge, interpret, build upon, tease, or poke fun at the original work, resulting in new insights and meaning. Such uses are known as transformative uses. Examples of transformative uses include editorials, criticism, scholarship, news reporting, teaching, and parody. The more transformative the use, the greater the likelihood the use will fit under the aegis of fair use. In addition, courts favor uses that are primarily educational or noncommercial.  Uses that displace sales or licensing opportunities for the owner of a work seldom qualify.

The Four Fair Use Factors

Using a four-factor fairness test, courts weigh the exclusive rights of copyright owners against the societal interest in the free flow of information. No one of the following factors is determinant, although factor four, which relates to economic harm to the copyright owner, weighs heavily in any fair use decision.

1.     The purposes and character of the use, including whether the use is primarily commercial. This factor also weigh the transformative nature of the use; 

2.     The nature of the work that's been copied;

3.     The amount and importance of what's quoted in relation to the original work;

4.     The effect the copying has on the market for the original work and its derivatives 

"Courts are solicitous of commercial publishers' free speech rights.  Therefore, the fact that a publication is sold does not strip it of fair use protection. Fair use determinations are based on the totality of the factors. No one factor is controlling."

Useful Fair Use Tips and Strategies

Despite the ad hoc nature of reported fair use decisions, here are general guidelines to help you ascertain if you have a viable fair use defense. 

• Fair use favors transformative uses. Are you using the work as a springboard to make new insights? Do you critique the original? Have you made a connection between the work you've copied and other works? Are you using the work to buttress your arguments or the arguments of others?
• Is the use a commercial use? While relevant, a commercial use is not dispositive. If the use can provide some social benefit, "by shedding light on a earlier work, and in the process creating a new one," the use may still be a fair use. 
•  In Andy Warhol Foundation v. Goldsmith (2023), the U.S. Supreme Court held that the claim to fairness diminishes, "where an original work and copying use share the same or highly similar purposes, or where wide dissemination of a secondary work would otherwise run the risk of substitution for the original or licensed derivatives of it."
• Since ideas are common property, fair use is more likely to be found using factual material.  
• Poetry, song lyrics, and visual works enjoy a high degree of protection under copyright law, so fair use tilts against the use of these works.
• Quoting from an unpublished work will expose you to greater risk than quoting previously published materials.
• The use must be reasonable in light of the purpose of the copying. The less you copy, the more likely fair use will be found. However, sometimes even a small (but important) portion borrowed from a work may qualify as an infringement.
• Synthesize facts in your own words, keeping in mind that close paraphrasing may constitute copyright infringement if done extensively.
• Lack of credit, or improper credit, weighs against finding fair use. However, giving credit will not transform an infringing use into a fair use.
• A parody (lawful), as opposed to satire (unlawful) is a work that ridicules or mocks another work. Fair use looks favorably upon parody. Make sure the parody is apparent and conjure up just enough of the original to convey your parodic points. 
• While fair use favors non-profit activities, being a not-for-profit will not automatically shield you from liability if your actions reduce the monetary incentives for creating future works. 

To sum up, don't compete with the work you copied. If the use displaces or diminishes the market for the original work, including potential licensing revenue, likely it's not a fair use. Generally, the more transformative the work is, the less the economic impact is.

Does Your LLC Protect You from Personal Liability for Infringement?

No, it does not. If you personally direct the infringement, your personal LLC or corporation will not shield you from personal liability for claims of either copyright or trademark infringement.  Under the theory of vicarious liability, infringement may arise if the managing member or corporate officer has the right and ability to supervise the infringement and a direct financial interest. Further, if you have knowledge of the infringement, and materially contribute to the infringing conduct of another or encourage or assist in the infringement, you may be liable for contributory infringement. 

 

Conclusion
 

Reminder. Fair use is a defense to copyright infringement. Unfortunately, fairness, like beauty, can be debated but not defined. If you are uncomfortable with the case-by-case nature of fair use determinations, consult with a copyright attorney. They can help you walk the sometimes tricky line between fair and foul use. By hiring an attorney, and following their advice, your good faith effort to ensure fair use applies, may have a positive impact on the measure of damages if a court rejects your fair use defense. Finally, your attorney can advise you on how to protect yourself against claims of infringement (and other media perils) with publisher's liability insurance. 

Resources

A Guide to Trademark Fair Use & Title Clearance

Trademark Registration and the Single Book Title

  

Image: Tight-Rope Walker, c.1885 (oil on canvas)

About the Artist:  Jean Louis Forain  (1852 - 1931)

 

DISCLAIMER: This article discusses general legal issues of interest and is not designed to give specific legal advice about specific circumstances. Professional legal advice should be obtained before acting upon any of the information contained in this article.

LLOYD JASSIN is a New York-based copyright, publishing, and entertainment attorney. He is co-author of the Copyright Permission and Libel Handbook: A Step-by-Step Guide for Writers, Editors, and Publishers (John Wiley & Sons, Inc.). In addition, Lloyd has written extensively on negotiating contracts in the publishing and entertainment industries and lectures frequently on contract and copyright issues affecting creators and their publisher partners. A long-time supporter of independent presses, he was First Amendment counsel to the Independent Book Publishers Association  (IBPA) and is a member of The Beacon Press advisory board.  

You may reach attorney Jassin at jassin@copylaw.org or at (212) 354-4442. His offices are in the heart of Times Square, in The Paramount Bldg., at 1501 Broadway, FL 12, NYC, 10036. Follow the Law Firm and Lloyd on Twitter at http://www.twitter.com/lloydjassin

 

How to Select a Book Title (and Not Get Sued)

Choosing the perfect book title is not just a marketing decision, it is a legal determination. It should provoke interest and curiosity in the book (or the product or service you sell on the back end) and not a lawsuit by an aggrieved trademark owner or removal of your listing via Amazon's report a violation and takedown tool.    

 

A trademark screening search will alert you if a book, podcast, or title of another creative work is likely to encounter legal problems.

 

Why Do a Trademark Screening Search? 

 

A screening search reduces the potential for trademark infringement claims. Before finalizing your title selection, it's important to do a preliminary search to determine if any similar or identical marks are used for related goods or services. While it is true that titles are not protected by copyright, if potential purchasers are likely to be confused about the source or sponsorship of a book, it could result in a trademark infringement or unfair competition claim. 

 

Making a Screening Search Part of the Process is Easy

  

A proper investigation includes using the Google search engine and the Trademark Office's 24/7 online database. These are invaluable tools for identifying obvious conflicts – identical or similar marks for related goods or services. Referred to by trademark attorneys as TESS, the free Trademark Electronic Search System database is located at http://tmsearch.uspto.gov. 

When doing a screening search, the central question is whether there is a confusing similarity to someone else's mark.  In evaluating the likelihood of confusion, the three key considerations are:

• Has the mark been registered? 
• How similar are the marks? 
• Are the goods or services related?
  

Similarities in sight, sound, and meaning, and the relatedness of the senior user's goods and services are the key vectors in any trademark infringement analysis. 

If the title you’ve selected is already registered by someone for related goods or services, absent a valid First Amendment defense (discussed later), soldier on and select another title. Put another way, if they cared enough to register their mark, there’s a good chance they are prepared to fight to protect it. 

CAUTION. Trademark rights are obtained through use, not registration.  That means you should also search the internet for marks that may raise legal issues. If seeking to register a trademark, a comprehensive full search and attorney clearance opinion is recommended. 

Free Expression and Fair Use Exceptions

Not every use of a trademark (or similar title) without permission is an infringement. There are many legitimate reasons to use a particular word or phrase as the title of a work that doesn’t have anything to do with trading on another party's goodwill, fame, or reputation. For example, words that merely describe the contents of a work are, at best, weak trademarks and receive no protection without proof that consumers associate them with a particular source. By source, the Trademark Act refers to the source of the physical or virtual goods rather than the author.

No matter how clever, single titles are not entitled to trademark registration.  However, if a single title attains secondary meaning -- a level of commercial magnetism associated with a runaway bestseller -- it can still be protected absent registration. 

Generic titles (100 Best Science Fiction Movies) standing alone are not entitled to trademark protection.­­­­ 

In analyzing whether a title infringes a trademark or another title, courts balance the right to speak freely against the trademark owner's rights. While using a disclaimer (the subject of a future post) is not a magic bullet, a prominent disclaimer can help reduce the potential for consumer confusion.

For a deeper dive on title clearance, click here. 

A Warning Before You Start Your Search

Given the subjective nature of of trademark law, deciding on your title depends on your risk tolerance, informed by search quality and legal analysis. When uncertain, it's wise to seek guidance from a trademark attorney. They can assess if your title is suitable for registration, and assist you in navigating the trademark registration maze.

How to Trademark a Book Title

A trademark registration gives you the exclusive right to use a trademark. Once you register a trademark, you can stop others from using both identical and confusingly similar marks for related goods or services.  

However, a single book title cannot be registered as a trademark unless it is used for a series of works (e.g., Harry Potter and the Philosopher's Stone, Harry Potter and the Chamber of Secrets).  In other words, a trademark can only be tied to a series of literary works, not a single title. 

The rationale for the “single title rule” is that once a book enters the public domain, it should remain there, and the public should have the right to identify it by its original title.

So how do you protect the first title in what you hope will be the next Hunger Games trilogy or Harry Potter series of fantasy novels? 

How Do I Protect the First Book in a Series?

The are to two ways to acquire trademark rights. The first is based on being the first to use the mark in connection with the sale or marketing of specific goods or services. The second is to be the first to file an Intent to Use application with the Patent and Trademark Office. After the PTO trademark examiner approves your Intent to Use application, you will have six months within which to file a Statement of Use. If you need more time to publish the second book in the series, you can file for multiple six-month extensions. By filing an Intent to Use application, you are staking out a claim to the title. Assuming your application meets the minimum filing requirements when the second book in the series is published and a Statement of Use is filed, the Trademark Office will re-evaluate the application. The key benefit of filing on this basis is that an Intent to Use application will temporarily block other later filed trademark applications for identical (or confusingly similar) marks for related goods.

When you obtain the registration for your title, the date you filed the Intent to Use application will serve as the date of first use. That gives you priority over those who began using the trademark after you filed.

A slightly different process is involved if you have an established book series. In either instance, you will need to publish book two in the series to obtain a federal registration.

 

If You Can't Protect a Single Title, Protect the Business or Website

While you can't register a single book title, you may be able to register a trademark for related goods or services, e.g., your business or a companion website. If consumers would reasonably assume that the owner of a product or service gave permission to publish a book with a confusingly similar title, but they didn’t, that deception may rise to the level of unfair competition (discussed later). 

 

Tip. Remember, trademark infringement is not simply a book-to-book, blog-to-blog, or app-to-app comparison. While conventional wisdom says you can't compare apples to oranges, they are both grown in orchards, are considered a fruit and are sold in the same section of your local supermarket. That makes them related for purposes of trademark law. If you don't have a book series, register the mark for the business behind the book, the website, or a related product or service. 

Unfair Competition

Unfair competition law is commonly used as a cudgel to go after bad actors who try to deceive consumers into falsely believing their goods (including books, blogs, and businesses) have been approved or endorsed by others. Even where a trademark has not been registered, it’s a violation of unfair competition law – and commercial morality -- to misrepresent the source or approval of a creative work.

Did you know the trademark for an existing business could prevent you from using a book title?

Suppose you are the owner of a successful business.  Under those circumstances, if consumers saw an unauthorized book with a confusingly similar title to your company and believed it was endorsed by you, that deceitful practice would fall under unfair competition law. 

Case & Comment. In a case involving the Ralph Lauren Polo brand, a court permanently stopped the unauthorized use of the name Polo for a lifestyle magazine. In granting the injunction, the court rationalized that the magazine and Ralph Lauren’s Polo brand were associated with fashion, elegance, and affluent lifestyles in the public's mind. While the First Amendment will allow you to write a book about Ralph Lauren and the fashion brand’s cultural significance, you cannot ride on Ralph Lauren’s designer coattails to boost your business by falsely implying an association when none exists.

For a deeper dive on trademark fair use and title clearance, click here.  

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TITLE CLEARANCE CHECKLIST

1.  Avoid titles that would confuse people into mistakenly believing that your work is associated with, endorsed by, or licensed for use by another party.    

2.  Likelihood of confusion (the test for trademark infringement) isn’t just about the confusion between similar literary titles. Protectable titles in one media (movies, video games, podcasts) may be protected in different media (books, sound recordings) if there is a likelihood of confusion.

3. In evaluating search results, consider the following:   

. Does the word or phrase have widespread public recognition?

. How similar is the word or phrase to your proposed title?

. Is the word or phrase used for related goods or services?

4.  Important! Marks only need to be confusingly similar, not exactly alike. Don’t ignore descriptive marks that have become associated with a single source over time.   

5.  Protectable titles in one media may be protected in different media if they are marketed through the same trade channels and sold to the same class of consumers or if it’s reasonable for consumers to believe the trademark owner approved the use of the title. 

6.  Descriptive terms that have not achieved public recognition due to widespread media attention and strong sales are not protected under trademark law and cannot serve as the basis of an infringement claim. 

7.  Not just words, but the look and feel of a book jacket can infringe an existing trademark. Courts look at the total image of the book cover (format, lettering, distinctive words, illustrations, colors used, and layout) to ascertain if there’s a likelihood of confusion.

8.  The mere use of a trademark in a title is not an infringement if the title is (a) artistically relevant to the underlying work and (b) no explicit suggestion is made that the trademark owner endorsed, sponsored, or approved the work.  See #7, #14

9. A single book or other creative work title is not entitled to trademark registration unless used for a series of creative works. See #10

10. While a single title for a creative work (e.g., book, movie, or song) cannot be registered as a trademark if it becomes broadly popular and associated with a single source, especially when it starts generating spin-offs and merchandise licensing tie-ins, it may be protected under unfair competition law.  

11.  It is fair use if you use a trademark in its descriptive sense to truthfully describe the trademark owner’s goods or services, provided there's no suggestion that the trademark owner endorsed, sponsored, or approved the work.    

12.  Search for registered trademarks using the Trademark Office’s free TESS database.  Next, search your favorite search engine for common law (unregistered) marks for related goods and services. If you intend to register your title after you've ruled out obvious conflicts, obtaining a full search and registrability opinion is highly recommended. 

13.  While title clearance and trademark searches are similar, it is best to work with a trademark attorney to register a series title or the name of a business.  They can tell you if the mark is registrable and improve the chances of registration.

14.  WHEN IN DOUBT, CONTACT A TRADEMARK ATTORNEY. 

For More Information:

Contract attorney Lloyd Jassin at jassin@copylaw.org or at (212) 354-4442.  His offices are in the heart of Times Square, in The Paramount Bldg., at 1501 Broadway, FL 12, NYC, 10036.  Follow the Law Firm and Lloyd on Twitter at http://www.twitter.com/lloydjassin 

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