Monthly Archives: September 2013

Self Publishing Podcast

Johnny, Sean, and Dave over at The Self Publishing Podcast were gracious enough to have me on their most recent podcast. The video is available on YouTube. I join in around the 10:40 mark. We talked about a number of legal issues, ranging from how writers obtain copyright, whether to register your copyright and why, the use of and concern over trademarks as they relate to what writers do, the right way to structure a collaboration with an eye toward potential legal problems, etc.

I’ll post a link to the their blog post covering this particular cast when it goes live.

[9/19/13] And here is their blog post!

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Doctorow on eBooks and Libraries

Here’s an interesting column by Cory Doctorow from Locus Online.

Doctorow and the Raw Deal

Wonderful image from the Chicago Public Library

Wonderful image from the Chicago Public Library

Doctorow feels that libraries are getting a raw deal from publishers. (Well isn’t everyone? Why should libraries have it different?) As a part of that conclusion, he points to the prices libraries have to pay for an eBook (in addition to the high price of DRM compliance and collection management software):

When libraries want to buy an e-book from the publisher, they find themselves paying as much as five times the price you or I pay for the same book. Literally – librarians are paying $60-80, and sometimes more, to include current release frontlist titles in their collections. Each of these e-books can only be lent to one patron at a time, which means that libraries are sometimes buying a dozen – or more – of these overpriced text-files.

I wonder how this compares in practice to what libraries pay for physical books. Have publishers been able to price discriminate in this manner with physical books? I know movie studios used to price discriminate with movie rental chains (anyone remember Blockbuster?), but I think that was enabled by the early release of the DVD (VHS tape!!) to the rental chains.

I also wonder how far this pricing differential extends beyond “frontlist titles.” We all know how utterly dependent publishers have become (made themselves) on the sales of just a few of their biggest sellers. If publishers are just jacking up the prices for the biggest bestsellers at release, then that may be a different story than if they are doing it for large swaths of their offerings.

Doctorow goes a step beyond saying that libraries pay too much and makes the case for libraries receiving discounts on eBooks:

There’s a good case to be made for libraries getting discounts on e-books, rather than paying premiums. For one thing, they’re excellent customers and they make bulk-buys. For another, the e-books that libraries buy stay in their collection forever, unlike print books. When a library downsizes its stock of last-year’s print bestseller, it puts most of its copies in its booksale for a nominal sum, a dollar or two, and often those books end up in the used-book stream, being sold alongside the new books on Amazon at steep discounts, competing for readers’ dollars.

But e-books can’t be sold in the booksale. They don’t ever end up competing with new books – and they never generate revenue for libraries as used books. That is, even when priced at par, e-books make more money for publishers and less money for libraries.

I think these are valid points, but they may be incomplete or overstated. As Doctorow points out, an eBook owned by a library would not compete with a publisher’s books in the used market, since the eBook cannot be sold as library excess (deaccession).  However, it perhaps is not entirely accurate to say that eBooks “don’t ever end up competing with new books.” Certainly, they don’t end up being sold side-by-side with new books. But I think you could make the argument that library eBooks compete with new books when a library patron decides to check-out the library eBook instead of purchasing a new book from the publisher.

As a part of arguing that their deal is “raw”, he also takes on the idea that libraries can only lend an eBook 26 times (at least with Harper Collins titles). He points out that it is a bit ridiculous to think that this is somehow equivalent to a physical book breaking down. Doctorow asks if Harper Collins is really saying that their books are of such poor quality that they can only be read 26 times before they disintegrate. I’m not sure that is the right question. Checking a book out, transporting home, reading it, transporting it back to the library, and then dumping it in a return drop box may present a little more wear and tear than simply reading the book.

In any event, it would seem that libraries would have a pretty good feel, if not actual data, on how long physical books in heavy circulation survived. What is the average for popular books?

Further, when considering how good or raw of a deal libraries are getting with Harper Collins’ restrictions, we should also factor in the differences eBooks have when compared to physical books. If it takes less effort to check out an eBook (going online) than a physical book (driving to library), then that would need to be factored into the “raw deal” calculus. If it is indeed much easier (less friction), then that would mean that library eBooks would present more competition for the sale of new books, which would in turn help justify things like a higher price and lending limits.

Libraries, Publishers, and Data

Doctorow suggests that publishers should give libraries a break in exchange for data:

Library e-book circulation data is a source of potentially priceless, actionable business intelligence for the publishers, if they can stop focusing on gouging libraries on price and focus on cooperating with them instead. Libraries could provide publishers with daily circulation figures, broken down by city, for every book, along with correlations between books (‘‘this book was checked out with that book’’). Provided the data is sufficiently aggregated, it would not pose a risk to individual patron privacy. This has to be managed carefully, of course, but if there’s one group that can be relied upon to treat this issue with the care it is due, it’s librarians.

This seems like a potentially great deal for publishers. One of the problems big publishers have (IMHO) is that they have no connection with and thus no knowledge of their ultimate customers, the readers. Big publishers only know (and sell to) book buyers working for bookstores. For eBooks, Amazon, Kobo and other retailers (and not the big publishers) know the readers. Here is an opportunity for publishers to begin to correct what is a huge problem for them – and it is a potentially workable solution for them because the publishers are not in competition with libraries (unlike the situation with Amazon).

A Promotional Opportunity?

I wonder if there is a corollary here to the problems associated with independents and small presses trying to get into regular distribution channels. Could small press books or even self-published books become part of library eBook collections? Especially if it were done as a promotional effort on the part of the small/indie publisher.

With physical books, libraries must be very particular with what books they add to their collection. Space is at a premium. Presumably, space problems are much, much less of a problem with eBooks. I am sure that the “slush pile” problem is still a hurdle that would have to be overcome. Libraries would probably not want to have to make their own judgments on every interested small/indie publisher, and they likely would not want to simply make everything available. But perhaps, with a series of books that have respectable sales, a system could be created for libraries to get eBooks of the first book.

I also don’t know if libraries would be interested in having just the first in a series. It seems like a customer service problem, or like something that would conflict with what they perceive as their mission. Maybe an entire series from an author with multiple series or a stand-alone book from an author with multiple books would cause less conflict.

Regardless of the end details, both libraries and small and indie publishers could benefit from finding a way to make something work. Not to mention the benefit to readers.


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Fifty Shades of a Mockingbird: Authors and Trademarks

In the last year or two, I’ve been asked more and more frequently whether authors should use trademarks to protect their works. Most of these questions have come from authors who have simply seen other authors claiming trademark rights in character and book names and wondered, “Hey, if they are doing it, should I be doing it?”

Harper Lee and E. L. James walk into a bar . . .

In the last couple of weeks, two prominent attempts by authors to secure trademarks in the titles of their works has brought the question back to the forefront of my mind. The first attempt came to light when Harper Lee’s trademark application for trademark rights in the phrase “To Kill a Mockingbird” was opposed by the Monroe County Museum, which owns the domain name and promotes itself by saying “Visit us and discover the heart of To Kill a Mockingbird.”

The second attempt came to light, as with Lee’s attempt, through the filing of an opposition to the author’s registration for trademark rights in their book’s title. Designer Micah Cohen is opposing E. L. Jame’s application for registration of “Fifty Shades of Grey” as a mark (through Fifty Shades Limited). Micah is claiming that he already has common law trademark rights in a confusingly similar mark (“Shades of Grey”).

So why seek trademark protection for a book title? Or for fictional character or location names?

The most obvious answer to that question is merchandising. For example, if you look at just about any product that has anything to do with Harry Potter, you will probably see a little “TM” buried in there somewhere. That “TM” symbol says that the producer of that item is claiming that word, name, symbol, or whatever is being used as a trademark. I have a Ravenclaw hat from my trip to the Wizarding World of Harry Potter. The embroidered crest of Ravenclaw House actually has a little “TM” in the crest itself. I don’t remember that from any descriptions in the book . . . .

"Wit Beyond Measure, B$*@#&ES!"

“Wit Beyond Measure, B$*@#&ES!”

(By the way, if someone associated with Harry Potter had written the second to last sentence, it would have read: “I have a Ravenclaw (TM) hat from my trip to the Wizarding World (TM) of Harry Potter (TM).”)

Trademarks rights can be easier to enforce against knock-off merchandise. Asking whether a hat with a Ravenclaw crest on it infringes the copyright in Rowling’s books (or the movies) may not as straight-forward a question as the rights owner would like. However, if the word “Ravenclaw” or the image of the Ravenclaw crest are trademarks (that is they indicate the source of the hat), then enforcement is a much clearer question.

We see this concern in both the Harper Lee and the E. L. James situations. With “To Kill a Mockingbird,” some have at least speculated that one of the reasons Harper Lee has sought trademark rights in the title of her book is that she may be tired of the museum being the one, and not her, making money off “To Kill a Mockingbird” t-shirts and other memorabilia. In the case of E. L. James, Fifty Shades Limited has been very aggressive in exploiting and protecting the Fifty Shades Brand.

A second possible explanation for the increased use of trademark protection may be that it is a necessary by-product of  cross-media technologies. What I mean by that, is that the current technological environment makes it possible for an author’s fictional characters and world to exist not only on the pages of a published print book, but also on a website or in a fake social media account for the character or in a book trailer or on fan created wiki or in fan fiction. Each different media channel represents a further means for the author to explore the character and express themselves as an author and for the author to generate revenue from the original work (either directly in the new media or indirectly through book sales). At the same time however, each different media channel also represents an avenue through which the author could lose control over aspects of the work, both creatively and economically.

Now, I don’t mean to suggest by those possible explanations that copyright protections would not be enough in those situations. I’m not saying that an author could not use their copyright to shut down a rogue fan site. I’m merely saying that trademark potentially adds another weapon in the author’s arsenal.

As an example, recall the suit between Rowling and the publishers of the Harry Potter Lexicon. Rowling won the suit, eventually, but the court’s language left open a lot of possibilities for future cases.

But getting trademark protection . . .

What authors don’t often consider when thinking about going down the trademark protection road is that obtaining trademark rights is very different than obtaining copyright rights. An author obtains copyright rights merely by fixing a work of authorship in a tangible medium of expression. Easy-peasy. It actually happens as a by product of the creation of the work by the author, without any thought or effort towards obtaining those rights. (Unless the work exists only in a purely oral or mental form – those would be your common examples of a lack of fixation)

With trademarks, however, authors have to do something more to obtain trademark rights. They have to use the mark in commerce as a mark. In other words, they must use the name of their character or the title of their book as an indicator of the source of a product or service. This means an author has to use it in some way different than simply having written and published a book with that title or containing that particular character.

Like copyright, registration is not necessary for obtaining protectable rights in a trademark, but, also like copyright, registration confers significant advantages (that I won’t go into in this post).

Additionally, authors can run into problems of having their potential rights in the trademarks they seek blocked by trademark rights already obtained by others. That may end up being the case for both Harper Lee and E. L. James, though the actual questions involved in both of those situations are fairly complicated (both legally and factually).

What’s the take-away on trademarks for authors?

Well, they may not be necessary in most instances, they may be helpful in some, and they may or may not be worth the effort needed to actually obtain.

In other words, the basic lawyer answer – “It depends.”

Hey, I’m a lawyer – sue me.

No wait . . .

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Listen to this: Self-Publishing Podcast – Killing the Sacred Cows

Episode 71 of the Self-Publishing Podcast features Dean Wesley Smith and Kristine Kathryn Rusch, talking about the new world of publishing. It’s always worth your time to listen to what Dean and Kris have to say.

From the SPP website:

We spoke to two very well-known names in indie publishing (which they refer to as “the new world of publishing,” Dean Wesley Smith and Kristine Kathryn Rusch. I’ve been wanting to talk to Kris and Dean for a while and we’ve gotten a lot of listener requests about it, so finally Mark from Kobo (poor guy, we’ll never be able to call him by his full name because he’s forever “Mark from Kobo”) made the introduction.

It might be worth checking out the YouTube video for this episode to watch Sean’s antics as he vehemently agrees with 99% of what they say, going so far as to make hugging and other gestures the whole time.

SPP is Johnny B Truant, Sean Platt and Dave Wright. If you are new to SPP, it is worth your time to dig through their old episodes.

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Intellectual Property and Cocktails – TGIF

It’s Friday and Happy Hour draws near . . . so why not mix IP and gin and . . . well, be creative – that’s the point. Here’s a great post on intellectual property law (trademarks and copyright) as applied (or not applied) to mixed drinks. It provides a great discussion of the theories on incentives for creation of intellectual property beyond those embodied in copyright and patent law.

So, An IP Lawyer Walks into a Bar . . .

Flaming Moe'sAs an aside, and as a peek into my pop culture-riddled brain, the discussion immediately reminded me of the “Flaming Moe’s” episode of the Simpsons. That show did demonstrate (perhaps unintentionally) that IP could protect cocktail recipes, namely through the use of trade secrets. In fact, the episode is a pretty good walk through of the benefits and downsides of using trade secret protection. Gonna have to work that into a class . . .

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Co-authors, Collaboration, and Joint Authorship – Part I of All That

In this post, I’m going to go over what defaults the law provides for co-authors, detail why those defaults are not at all what you want, and recommend what you should do about it (i.e. enter into a collaboration agreement). I’ll leave the law on what constitutes joint authorship for a later post.

Federal copyright law provides for co-ownership of copyright rights when a work is jointly authored. The statute chooses to define “joint works” rather than “joint authors,” but courts typically discuss it in terms of joint authors and joint authorship. Co-ownership and the relative rights stemming from it are pretty much borrowed from the law of physical property, i.e. what happens when two people co-own a piece of land.

Co-ownership entails each co-owner having rights to the undivided whole. With land, that means that a co-owner has rights to possess and use the whole tract of land, even though their ownership percentage might only be 50%. Each of the owners has the rights to possess the entire piece of land. Thus, the law does not say that each of two co-owners gets to possess only half the land.

How can two people possess the entirety of a parcel of land at the same time? Well, they can’t. If one wants to sow the land and the other wants to build condominiums, they can’t both do what they want even though they each have the right to do as they want. When this sort of conflict arises, the law has several different types of partition that are available to the co-owners. Essentially, partition divides the ownership into separate pieces, and the co-owners no longer co-own anything. Each might own half the land (partition by kind), each might get half the proceeds from the sale of the land (partition by sale), or one might pay the other when the resulting parcels of land are of unequal value (owelty).

When these principles of concurrent ownership are imported into the area of intellectual property, we only get the ownership side and not the partition side. Because a work of authorship (that thing protected by copyright) is intangible, the law does not treat it as being, or even needing to be, divisible.

So, joint authors (aka co-authors) have an undivided interest in the copyright. That has some pretty big consequences.

It means that each joint author can do whatever they want to with the copyright rights. Each co-author can license it to whomever they want – without needing to seek the approval of the other.

Aside from meaning that one author may be stuck with the decision of a co-author, that fact has a second consequence. Because either joint author can license it to whomever they want, neither joint author can grant exclusive rights, what most publishers want, without the agreement of the other joint author. All co-authors would have to enter into a license or transfer in order to convey exclusive rights. If one doesn’t agree, then exclusive rights cannot be granted.

A co-author who unilaterally licenses a work does have to account to the other co-author for any profits realized from that transfer. But that lack of control and the reduced commercial possibilities that can stem from a lack of agreement remain – when you are stuck with the default rules provided by copyright law.

So, your co-author decides to post your novel online for anyone to download for free, and you’d rather offer it for sale? Fine, you can offer it for sale, but your co-author can leave it up for free. And if you do make any money off the sales, you have to give half the profit to your co-author (who put it up for free download). Those are the default settings of joint authorship.

What if one co-author wants to self-publish the novel while the other wants to go with a traditional publisher (assuming it was written on spec)? What about the sale of subsidiary rights? What about editorial decisions?

Copyright law provides co-authors with no resolution to these problems. Thanks for nothing, copyright law.

The solution, therefore, is to use a contract to build something beyond the default rules.

Writers who are going to work together to produce a story or novel should draft (or have a lawyer draft) and enter into a collaboration agreement. As a general matter, the purpose of contracts is to decide what happens when it all goes down the crapper – before it goes down the crapper.

Two Co-authors Resolving a Dispute over whether to use "said" or "asked" (Or maybe an image from the Clang Kickstarter) See: On a related note, when is that game going to happen?!?!

Two co-authors resolving a dispute over whether to use “said” or “asked”
(Or maybe an image from the Clang Kickstarter)
On a related note, when is that game going to happen?!?!

As potential co-authors, think about all the things that could wrong and all the things about which you might disagree , and then decide how you would want to resolve those issues – now, beforehand, while you both are still on speaking terms (or even alive – death of one of the co-authors mid-project is something you might want to consider accounting for). Note that this means going beyond merely all of the “how would we make decisions” type of issues, but also thinking about “what if something bad happens” type of issues. For example, what if one of the co-authors stumbles into a George R.R. Martin novel and they are unable to finish the project on account of being dead along with everyone else?

I’m not going to attempt an even partial list here of what should go into such an agreement. My purpose is to point out the desirability of having such an agreement. And hopefully I’ve accomplished that.


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