Jonathan Kirsch, a publishing attorney based in Los Angeles, is general counsel of the Independent Book Publishers Association and a recipient of its Benjamin Franklin Award for excellence in publishing.

Here are a few questions that every publisher and author ought to ask (and answer) before publishing a book: Do I have the right to publish the materials that appear in the book? What legal risks will I face if I use the materials? What can I do to reduce those risks?

These questions should be asked about literally everything that appears in, on, or in connection with the book, including not only the manuscript and artwork on interior pages but also the covers, dust jacket, catalog copy and art, publicity and promotion materials, and so on. The questions generally apply to books in print, audio, and electronic formats. (Additional questions, not covered here, must be addressed if material is broadcast or published via the Internet.)

Depending on how the questions are answered, it may be necessary to seek rights and permissions from third parties, change or cut problematic material, and/or use an appropriate disclaimer. In all cases, it is prudent to consult an attorney who is experienced in publishing law to assist in identifying and addressing the legal risks of publishing.

The process is generally called clearance, and the following checklist is a tool that I have prepared to help publishers and authors identify some major legal risks prior to publication. Whenever you detect a red flag, you should take appropriate steps to determine whether a legal risk actually exists and, if so, how to reduce the risk.

The checklist does not provide specific approaches to reducing legal risks. Each risk must be assessed in context, and the approaches to reducing the risk will be based on the particular law and facts that apply. But the checklist is a starting point for publishers and authors who seek to “clear” their work for publication.

• What is the source of the material to be used? If the text, images, sound recordings, selection and arrangement of data, and other content were not created by or for the author and/or publisher, or later acquired by the author and/or publisher, all pursuant to appropriate documents that confirm the author’s or publisher’s ownership or license of rights, then the right to use the materials should be reviewed for potential copyright and trademark infringement issues.
• If the material is being used with the consent of a third party (e.g., pursuant to a license or with permission), have any restrictions been placed on such use? If so, the use of the material should be reviewed to make sure that it is in compliance with such restrictions.

• Does the material to be used carry a copyright, trademark, or other legal notice that discloses the owner and/or imposes any restrictions on use? The presence of a notice on material that the author and/or publisher intends to use is a red flag. It means legal rights and restrictions of some kind are being claimed and must be evaluated and addressed. However, the absence of notices does not mean that the material is necessarily available for use, and the other points on the checklist should always be considered.

• Is the material subject to copyright protection? If so, is the material being used in a way that justifies the assertion of the Fair Use Doctrine under copyright law?

• If Fair Use is inapplicable, or if the author and/or publisher wishes to reduce the risk of a claim, has the material been cleared for use pursuant to appropriate documents?
• Is the material subject to protection as a trademark? If so, is the material being used in a way that justifies the assertion of the Fair Use Doctrine under trademark law?

• If Fair Use is inapplicable, or if the author and/or publisher wishes to reduce the risk of a claim, has the material been cleared for use pursuant to appropriate documents?
• Does the material depict or quote a real person, living or dead?
• If the material depicts a real person, living or dead, is it being used for purposes of advertising, merchandising, or endorsement, whether express or implied? If so, the material should be reviewed for claims based on misappropriation of the right of publicity.
• If the material depicts a real person who is alive, does it depict conduct or circumstances that are arguably intrusive, embarrassing, or injurious to reputation (including, by way of example only, criminal or sexual conduct)? If so, the material should be reviewed for defamation and/or invasion of privacy claims.
• If the work is fictional, or if it is a work of nonfiction in which individuals or businesses are depicted fictitiously, is there a risk that the reader will be able to identify the real person or business? If so, the material must be reviewed for claims based on defamation, invasion of privacy, or misappropriation of the right of publicity. If the material includes any claimed or implied endorsements by an individual, an organization, or a business (e.g., blurbs), the material should be reviewed for false claims of sponsorship, endorsement, or affiliation. If the risk of legal claims is apparent, then the material should be revised to minimize or eliminate such claims, or appropriate releases should be secured from potential claimants.
• Does the material depict sexual conduct or other sexual content? If so, the material should be reviewed and evaluated for legal issues arising under obscenity and child pornography statutes.

• Are copyright and trademark notices being used as appropriate or as required? Intellectual property owned by the author and/or publisher should be used in conjunction with appropriate notices. Third-party intellectual property used pursuant to license may require the inclusion of appropriate notices.

• Will the use of appropriate disclaimers reduce the risk of a successful claim? Disclaimers may be appropriate if the author and/or publisher wish to assert the Fair Use Doctrine, e.g., to establish “purpose and character of use” and to disclaim an express or implied sponsorship or endorsement. Disclaimers may be appropriate to reduce the risk of a claim by alerting the reader that the content is fictitious. Disclaimers may be appropriate when the content offers advice, instruction, and/or information that the reader may use or rely upon. Disclaimers should be used to alert the reader if works presented as nonfiction also included fictional elements. Publishing histories should be used if a work has been retitled or re-covered without the addition of significant new content.

• Has the author and/or publisher received any communication that threatens or asserts a legal claim and/or demands the discontinuance of use of specified materials or subject matter? If so, no use should be made of any such materials unless they have been reviewed and cleared by counsel.

Copyright © 2009 by Jonathan Kirsch