PUBLISHED SEPTEMBER 2016
by Deb Vanasse, IBPA Independent Staff Reporter
Contracts, copyright, trademark, permissions—the legal challenges of publishing can seem overwhelming. But by taking a proactive stance and making the most of available resources, savvy publishers confront legal issues head-on.
The Dotted Line
At the heart of publishing is the author-publisher relationship. Clear, enforceable contracts establish the foundation on which these relationships are built. The key is to draft a contract that addresses potential problems before they arise.
“The most pressing issue that publishers face is to redact a contract that is fair to both the publisher and the author,” says Patricia Alvarado, president of Panama-based Piggy Press Books. Her attention was first drawn to the importance of contracts when one of her authors asked for reversion of rights on a particular title before his five-year contract had expired.
The author then expanded his request. “Piggy Press Books had published 13 of his titles in succession, and he wanted all of the rights back as they came due or he would sue,” Alvarado explains. Rather than continue to deal with the “persnickety author” in whom the company had invested a good amount of time and money, Alvarado’s team of advisors suggested she release all 13 titles at once.
To avoid similar problems in the future, Alvarado says she’s now more selective about who she publishes. “Get to know the author, illustrator, or editor before you sign on the dotted line,” she advises.
Publisher Patricia Rockwell of Cozy Cat Press in Illinois realized she had contract problems when one of her authors began selling their book on their own. “As it wasn’t a major financial loss, I did not press the issue,” Rockwell says. But she did consult an attorney for help with revising the company’s boilerplate language.
To clarify and simplify their contracts, Rockwell recommends that publishers study various sample contracts—many of which, she says, are available online. After drafting the contract, she suggests publishers hire an attorney to ensure nothing of significance has been overlooked.
To Catch a Thief
Theft of warehouse inventory is a relatively straightforward crime that engenders a relatively straightforward response. But for a publisher, the theft of intellectual property can potentially result in even greater losses that are tougher to fight.
In the digital age, the potential for copyright theft has expanded exponentially. “With the changes in the copyright laws, it seems to be a free-for-all when it comes to people claiming rights to material,” notes Chris Brewer, publisher at Bear State Books. “There has been no clear document on when copyright exists and who holds it.”
But in certain cases, the violations seem obvious, as the infringer should know better. Stephen Maysonave, cofounder of Empowerment Productions, was surprised to discover that a “billion-dollar plus” company, Land’s End, had violated copyright of Casual Power: How to Power Up Your Nonverbal Communication and Dress Down for Success by Sherry Maysonave.
After a corporate client brought the infringement to Maysonave’s attention, he engaged an experienced legal firm to represent his company in a four-count lawsuit against Land’s End, maintaining that the retailer had illegally copied from Casual Power to create an “Art of Business Casual” website component.
The Land’s End site featured downloadable dress codes drawn from copyrighted content. “Empowerment Enterprises conducts corporate seminars and workshops on professional business attire and creates dress codes for companies,” Maysonave explains. “If you can get the same information for free, why spend $30 to purchase the book?”
When Empowerment Enterprises’ lawsuit was first filed, attorneys for Land’s End assured Maysonave that the company would remove the copyrighted content. When that didn’t happen, Maysonave filed an amended suit.
“After more than three years of time-consuming, expensive efforts, the lawsuit was settled to our satisfaction before trial in May 2003,” Maysonave says. Financial details cannot be disclosed.
Maysonave advises fellow publishers to take a proactive stance regarding copyright violations. “Be vigilant and watch the internet for potential rip-offs, even partial, and aggressively pursue and publicize any violation,” he advises.
The Right Way to Handle Rights
Legitimate publishers aim to do business on the up-and-up, but navigating the complexities of permissions and trademarks can prove tricky.
At Bear State, Brewer publishes historical accounts that rely heavily on firsthand sources. “Using research and interview material can be difficult and complicated when it comes to heirs and those who claim to hold rights,” he says.
Brewer advises fellow publishers to exercise due diligence in determining who holds the rights to the material they are publishing. “I had an author nonchalantly tell me they found the images they were planning on using for their book online so it must be okay to use them,” he says. “Check your author’s sources before you print.”
As publisher Deborah Robson of Nomad Press points out, permissions aren’t always easy to track and negotiate. For this reason, she outsources the task to Melissa Flamson of With Permission, whose services Robson describes as “thorough and reasonable.”
With certain types of intellectual property, a publisher’s concerns may extend beyond copyright to trademark. As Katie Mullaly prepared to publish her Land of… book series through her own Faceted Press, she determined that securing trademarks was the best way to protect both the series name and a key character, the Yabbut.
After consulting with a patent attorney on the basics of trademarking, Mullaly opted to save money by filing the paperwork on her own for five trademarks, using the class for publications as well as for games and toys, which she hopes to one day debut.
“The filing process can be complicated,” she admits, “but I was able to take the time to study the system, and my filings were fairly straightforward.”
The cost for US filings is $225 each, Mullaly explains. International filings are significantly more expensive—she estimates the Canadian trademark for the Yabbut will cost at least $1,000, and filing in the EU, Great Britain, Australia, and New Zealand will run at least $3,500 each.
“This is a big cost, but to hang on to my creations and their names is very important to me,” Mullaly says. “If an investor wants to join us, having these trademarks will show that I am invested in my products.”
She advises publishers who want to trademark a series or character to research the process thoroughly. “Know what the requirements, limitations, and your own abilities are before you hire an attorney or decide to file on your own,” she says.
Even publishers who do their best to play by the rules may be called on to defend themselves against legal action. Shortly after acquiring Colorado-based Nomad Press from a previous owner, Robson received notice that she should stop using the name Nomad because another press was filing to trademark it.
“Trademarking press names was not common at the time,” Robson says. “I’m not sure it’s especially routine, even now.”
To help her handle this unexpected development, Robson hired intellectual property attorney Lloyd Rich, who was associated with IBPA (then PMA) and had an office in her region. “Rich advised me that we needed to monitor the progression of the trademark application and file a protest when it came up for consideration,” Robson says.
The end result was her ability to maintain to use the name “Nomad Press” for the needlecraft books that she publishes, while the other press uses the name for books of other genres. By contractual agreement, each publisher is required to refer inquiries for the other press, although Robson admits it’s difficult to monitor how consistently this occurs. A third press also uses the same name, but that company was not involved in the trademark proceedings.
“I could have saved $5,000 by caving immediately and changing the name of our press,” Robson says. “It was a huge hit financially, in time and energy, and emotionally. However, since we had prior use, it didn’t occur to me that giving in would have been an appropriate decision.”
Likewise, Steve Elmore was blindsided in December 2015 when a judge granted an injunction filed by Harvard University to prohibit his Spirit Bird Press from advertising, selling, and distributing his book In Search of Nampeyo. At issue was the question of what was included when the university released all rights to the manuscript to Elmore, whose attempts to publish with Harvard’s Peabody Museum Press went awry during the peer review process.
In particular, the university objects to Elmore’s use of photographs he took of items within the museum’s collection. Elmore contends that these photographs were part of the manuscript that Harvard released to him. Having spent $36,000 on publishing the book, which sold 900 copies before the injunction began, Elmore filed a countersuit against Harvard in federal court and also initiated legal action against the university in the state courts of New Mexico, his home state.
“I filed suit against them only because they filed suit against me,” Elmore says, explaining that his counterclaims are for damages involving his reputation and lost sales. Toward these ends, he is represented by intellectual property rights attorney Chris Delaura of Albuquerque.
In addition to relying on a good attorney, Elmore notes the need for fortitude. “I’m standing up for my book and for the rights of authors and publishers against a corporate bully. It’s an extremely difficult process, [but] I’m going to keep getting to the truth of what happened.”
Elmore suggests that other author-publishers protect themselves by seeking professional counsel before issues arise. “I acted in good faith but was naïve in trusting Harvard to do the right thing,” he says.
Regarding Harvard’s copyright claim to the photographs used in the book, Elmore has prevailed in court. He’s now waiting to see if the judge will require Harvard to reimburse $80,000 in legal defense fees. The university’s claim that Elmore breached contract by publishing the photos is yet to be decided. He contends that his letter of release grants permission for him to publish the entire manuscript, including photos, wherever he chooses.
Resilience and Resources
Books entice publishers into the business; the law helps keep them there.
With characteristic resilience, independent publishers confront legal issues involving contracts, copyright, trademarks, permissions, and more. They take a proactive approach to avert problems whenever possible and confront any others that arise.
By drawing on lessons learned from experience and by making good use of available resources, publishers spare themselves loss and anguish, enabling them to focus on the business at hand—making books.
Deb Vanasse, who cofounded 49 Writers and created author co-op Running Fox Books, is the author of 17 books. Her most recent are Write Your Best Book, a practical guide to writing books that rise above the rest, and What Every Author Should Know, a comprehensive guide to book publishing and promotion, as well as Wealth Woman: Kate Carmack and the Klondike Race for Gold.