An Overview of Intellectual Property Law for Indie Authors

Indie Pub Austin meetup on IP Law

Disclaimer: the information here is educational. It does not create an attorney client privilege between the author/presenters or the reader.

The focus of our meetup today was Intellectual Property law. Notes taken from slides and presentation prepared by Nicole Sallie Franklin and Elizabeth K. Stanley (bios below).

The ecosystem of Intellectual Property law includes:

  • Patents
  • Trademarks
  • Copyright

Plus, specific IP considerations for indie authors:

  • Trademark: Branding and Titles
  • Copyright: Protection and Using Third Party Works
  • Licensing and Contract Issues
  • Defamation, Privacy, and Publicity Rights

An Overview of Intellectual Property Law

Patents

Patents give the patent owner the right to exclude others from making, using, selling, or importing the invention (a limited time monopoly) in exchange for disclosing the details of the invention to the public.

Three types of patents:

  • Utility patents (to protect inventions)
  • Design patents (to protect ornamental designs/how something looks)
  • Plant patents
    • To protect new varieties of plants

US Patent and Trademark Office

Note: author’s don’t need to worry much about patents.

Trademarks

A trademark is any word, name, symbol, slogan, configuration, design, etc. that identifies your product or service

  • Logos, pictures, symbols, labels, designs
    • Polo Ralph Lauren horse
    • Nike swoosh
    • Burberry plaid
    • Hershey bar wrapper

Trademark rights are territorial in nature

  • Most of the world uses a “first to file” system (Japan, China, France, Germany, Spain, and the United Kingdom.)
  • Some countries use a “first to use” system(United States, Canada, Australia)
  • In the United States:
    • To obtain rights, must use the mark as a source identifier in commerce on goods or in connection with services
    • Trademark registration is not required but is helpful
    • Trademark rights can last indefinitely if you continue to use the mark
    • Function of the trademark – identifier of the source of product/service

So, in the US, you don’t need to register your trademark for it to be valid. You just need to use it. However, the federal registration will give you solid proof in court that supports your claim. You can get either a state or federal registration.

Benefits of Federal Registration:

  • Exclusive right to use mark in connection with goods/services listed in registration
  • Presumption of mark’s validity
  • Presumption of nationwide ownership
  • Public notice of your claim of ownership

Registration term is 10 years (renewable), but rights can last indefinitely if continuously used.

The biggest reason for Trademark laws is to prevent consumer confusion. Trademark law covers anything that is “confusingly similar”—if something sounds too similar, looks too similar, or is spelled similarly, it would likely be considered in violation of the trademark.

Trademarks are suitcases full of info about different aspects of a brand: the quality, price point, location, etc. Trademark rights are also territorial,

US Patent and Trademark Office

To file in EU, go to one central location: the Community Trademark System, managed by OHIM

Copyright

Copyright law protects “original works of authorship” fixed in a tangible medium

For example:

  • Literary works, including computer software
  • Musical works, including accompanying lyrics
  • Dramatic works, including accompanying music
  • Pantomimes and choreographic works
  • Pictorial, graphical, and sculptural works
  • Motion pictures and other audiovisual works
  • Sound recordings
  • Architectural works (since 1990)

Copyright protects the expression of an idea, not the idea itself.

Copyright does NOT protect:

  • Functionality (clothing design, useful articles)
  • Short phrases or titles
  • Against independent creation

Copyright exists at the time of creation.

Duration:

  • Generally: 70 years after the author’s death
  • For anonymous works or a work made for hire: 95 years from publication, or 120 years from creation, whichever expires first.

As the owner, you get a bundle of rights.

Author has the right (or may license others) to:

  • Copy
  • Distribute
  • Display
  • Perform
  • Make derivative works

Copyright law protects against copying, distributing, displaying, performing, or creating derivative works of or based on an author’s first impression.

You CAN register your copyright, but you don’t have to have a registration certificate in order to hold a copyright. Registration for copyright is $35 per work, and you can do that at copyright.gov.

Specific IP Considerations for Indie Authors

Trademark: key considerations

Consider branding your publishing house name.

  • e.g. HarperCollins, Oxford University Press, etc.

Book titles may be protected by trademark law

  • Title of a single creative work cannot be registered.
  • Title of a series of books or other creative works can be registered
    • Must show that title is used on at least two different works
    • For a portion of a title, must show that the public perceives that portion as a mark for the series, i.e. The Magic Schoolbus inside the Earth.

Copyright: Key Considerations

  • Protecting your work
  • Protecting yourself or avoiding IP claims

Protecting Your Work: Formalities

Copyright notice

  • Advisable but not required
  • Format
    • © (Year of First Publication) (Name of Copyright Owner)
    • © 2015 Baker Botts LLP [for example]
  • Copyright registration
    • Required to sue for infringement
    • Other Benefits
      • Required to sue for infringement
      • Other benefits:
        • Presumption of copyright ownership
        • Presumption of copyright validity
        • can recover statutory damages (3x!)
        • can recover attorney’s fees

Protecting Your Work: Restricting Access

  • Digital Rights Management
    • Access control technologies can help limit the ability to print, copy, or share content
    • Example: Apple’s FairPlay
  • Reader Licenses
    • An opportunity to educate readers about proper use of your content
    • Creative Commons copyright licenses may be helpful

Protecting Yourself: Avoiding IP Claims

Utilizing third party artwork

  • Best practice – engage third party + assignment
  • Purchase stock artwork, but pay attention to license terms
  • Obtain artwork from the public domain
    • What is the public domain?
      • Generally, the public domain includes works that have been dedicated to the public or that have an expired copyright (generally works published prior to 1923)
      • Even if a work is in the public domain in the US, it may still be protected by copyright in another country.
  • Tables, maps, charts?
    • Facts – not protectable, but presentation may be protectable.

Utilizing excerpts from other works

  • e.g. quotes, song lyrics, etc.
  • Best practice is to obtain permission to include excerpts.
  • Fair use
    • Allows for unlicensed use of copyright-protected works

Fair Use Factors

  • Purpose and character of the use – Is it transformative?
  • Nature of the copyrighted work
  • Amount and substantiality of the portion used in relation to the copyrighted work
  • Amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • Effect of the use on the potential market for or value of the copyrighted work (included market for derivative works)

Fair use situations: criticism, education, using only a small small portion of a copyrighted work in context of your own work.

Protecting Yourself: Licensing/Contract Issues

Licenses between Author and Publisher

  • Explains who publisher will use author’s work
  • Authors can negotiate for what rights
    • film/television rights, electronic rights, etc.
  • Often asks the author to guarantee to the publisher that the author’s work does not infringe on third-party rights
    • Authors may be liable for copyright infringement

Distributor Licenses

  • Consider the terms of the license carefully

Other Legal Considerations: Defamation/Privacy

Defamation

  • False statements of fact about a living individual that subject the individual to ridicule
    • May also apply to deceased individuals or corporations
    • More freedom if individuals are considered public figures
  • Authors and publishers need to be able to show that statements are true or that the author reasonably believed the statements to be true.

Privacy

  • Individual privacy rights
  • Be careful when publishing sensitive or embarrassing personal information about an individual
  • Privacy rules are more strict outside the United States

Other Legal Considerations: Publicity

  • Cannot exploit the value of a person’s name or likeness
    • Be careful when publishing information about celebrities, famous athletes, etc.
  • Cannot use any person’s name or likeness in advertising without that person’s permission.

Questions & Answers

Say I use a quote in my book from a movie—the character is quoting a movie. Do I need to be worried about copyright violation?

  • This DOES NOT violate copyright. Words, names, and short phrases are not covered under copyright law. I.e. there’s no copyright for the words “I love you”.

What is your normal response to someone who says “I have a great idea but I’m afraid people will steal it“?

  • Get them to sign an NDA as a first step! That said, unless you actually write it/build it, you don’t have the copyright to it.

Bios of Presenters

600_439326932Nicole Sallie Franklin

Nicole Sallie Franklin graduated from Texas Wesleyan Law School with a Certificate in Intellectual Property. Nicole has worked as an Intellectual Property Specialist at Facebook, Inc. in Austin and serves as Website Officer of the IP Section of the State Bar of Texas. She has also served as an IP mentor for Rampcorp and Avinde, both Austin-based start-up accelerators for women entrepreneurs.

Nicole co-authored “Protecting Your Ideas: An Overview of Intellectual Property Law,” an educational article for the State Bar of Texas, in collaboration with the Texas Young Lawyers Association. In 2013, Nicole was a featured presenter on copyright and trademark law for the Independent Fashion Bloggers Conference in New York and participated as a trademark mentor at the 2015 SXSW Interactive Festival. For over 5 years, Nicole has owned and authored Thread Conscious, a fashion and lifestyle blog.

600_440211386Elizabeth K. Stanley

Elizabeth K. Stanley practices in all areas of intellectual property law, including the protection, enforcement and licensing of trademarks and copyrights and internet domain name disputes. Ms. Stanley also has experience representing clients in opposition and cancellation proceedings before the Trademark Trial and Appeal Board, and in litigation proceedings in state and federal court. She is a Senior Associate Attorney at Baker Botts L.L.P.

Additional Resources

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