Jan is Jan Fields, moderator of this interview with Linda Joy Kattwinkel, and Web Editor of the ICL Web Site.
Green shows names or usernames of people and the questions they asked Linda Joy.

Jan: Hi, and welcome to tonights special event -- a chat with guest speaker, Linda Joy Kattwinkel. I'm your host/moderator, Jan Fields -- and tonight we're going to learn more about one of my favorite subjects: intellectual property law. If you want to ask a question and be sure Linda Joy gets a chance to see it... you'll need to use either the "ask a question" button on the bar across the middle of your screen. OR type /ask...then space once and type your question. That passes the question to me and I can post it for Linda Joy so that she can answer it for you and in the transcript. Now, let's get going.

Jan: Linda Joy Kattwinkel has been a visual artist for over 40 years and an attorney for over 15 years. She was an illustrator for 13 years before receiving her law degree in 1991. As an attorney,, Linda Joy represents clients and serves as a mediator/arbitrator in matters of intellectual property and arts law. She is also the author of "Legalities," a monthly online column on legal issues for artists for the Northern Chapter of the Graphic Artists Guild (see http//:norcal.gag.org). Tonight she is here to answer your questions related to the legal issues involved in writing and illustrating for children's books, such as copyright, trademarks, rights of publicity and privacy, authorship and publishing contracts.

Jan: Welcome, Linda Joy! I'm delighted to have you here tonight.

Linda Joy:

Jan: We're going to dive right in because we have lots of questions and I know the folks are eager for answers.

Linda Joy: A trademark is different from a copyright. As you've noted, trademarks protect a brand name, which gives consumers an indication of the source of goods or services, or in this case, your series of books. So for example, if you have a title for the series of books, that will be your trademark. One of my clients, Craig Frazier, has a series of books about Stanley. Stanley is his trademark. Copyright, on the other hand, protects the actual text and/or illustrations of each book. So trademark rights don't trump copyright. They protect different aspects of the books. Someone could infringe Craig's trademark rights by doing a Stanley book even if they didn't copy his illustrations or text. On the other hand, someone could infringe his copyright if they copied his text, but called it an Arnold book instead.

Jan: I think Chuck also wants to know if he would have to register his trademark to prevent others from merchandising based on his books.

Linda Joy: Not necessarily. Trademark rights are created just by using your mark. However, registration gives you enhanced federal rights, including nationwide scope. You could also file an "intent-to-use" trademark application for specific merchandise which would reserve your rights before you start merchandising. You could also be protected under copyright law. If the merchandise is based on your text or images, it could be considered a "derivative work" which would be a copyright infringement if done without your permission. For example, dolls based on a Disney character would be a copyright infringement. Is that more what you are concerned about?

Jan: I think between the two answers, you've probably got him covered.

Linda Joy: Canadian law is a little bit different, but most of the essential principals are the same. That's because both U.S. and Canadian law have a common source in the common law of the U.K.

Linda Joy: You own your copyright in the story as soon as you have written it. I assume by "should I copyright it?" you are asking whether you should register the copyright. The answer is YES, you should. It is a very simple process. Go to www.copyright.gov and follow the instructions. You can register the manuscript, and/or the first published version. The organization will be your first licensed publisher of the story but that does not mean you are stuck with them. If another publisher wants to pick it up, you can grant them a license. Just make sure the organization has a nonexclusive license, or that it is limited in time, so that your next publisher is not in conflict. Your license to the organization is automatically nonexclusive unless you have a signed writing to the contrary.

Jan: And when you're licensing ...the wording in the actual contract for serial work is usually something like "First Rights" -- right, that's licensing?

Linda Joy: Licensing means you are granting some type of rights to the publisher so yes, "first rights" is a type of license - in this case it usually means exclusive right to the first printed edition.

Linda Joy: I'm glad you asked this question. "Poor man's copyright" is an urban legend. It has no legal effect, and certainly does not substitute for registration. You need to get a real registration in order to even be able to file a lawsuit in the event of infringement.

Linda Joy: For unpublished works such as manuscripts, you can register several related works together. So for example, you can register a series of 3 manuscripts under one application.

Linda Joy: No. If it was first registered in 1909, it is now in the public domain.

Linda Joy: This is a complicated issue. Generally, the mere name of a character cannot be protected. Certainly, under copyright there is no protection for a character name. However, copyright may protect the entire character's story along with the name. For example, you cannot do a sequal to Harry Potter. The more common way character names are protected is through trademark law. The character name becomes a brand for the books, derivative works and merchandising. For example, Harry Potter movies, action figures, etc. In that way it can also be a brand for books, which is why you could get in trouble using the same character name. However, this rule only holds true for unique character names. No-one can own simple first names such as Tom, Dick, Harry, Jane or Spot. But again, this assumes that the only thing your work might have in common with a previous book is the name itself, and you are not copying the actual character.

Jan: Could you use a character name in a way that clearly isn't introducing the actual character -- like having a story where some kid's hamster is named ... Dick Tracy, for example. Clearly the name is a reference of sorts to the original character.

Linda Joy: That would be a "fair use" of the character name in a way that reflects the cultural meaning of Dick Tracy to your character. So yes, that would be okay.

Linda Joy: Your understanding is correct. Recipes are considered instructions rather than expressive authorship. Thus they cannot be protected by copyright. You do not have to change ingredients.

Linda Joy: I think you can put in your own interpretation of it without a problem. Mechanical reproduction of a pattern could be copyright infringement. However, making the garment from a pattern is ok.

Linda Joy: No. The copyright/trademark owners have exclusive rights to create and distribute derivative works, whether free or not.

Linda Joy: It is common practice for publishers to want this; it's also common to negotiate about them. Especially if its a first publisher, I recommend negotiating for such limits. If your book is a success, they will be worth more later and you want to preserve your stronger bargaining power then.

Linda Joy: YES. Publishers may put in very unfavorable terms, hoping you won't know any better.

Linda Joy: This is a common practice. However, it should be spelled out in the publishing contract, and there should be a limit to how much, and how long, the royalties can be withheld.

Linda Joy: That's a good question. If you are planning to identify the Judge, you may be invoking a problem with her rights of publicity and privacy. Even if she gave you consent to use the interview for the course, that doesn't necessarily extend to a new article.

Linda Joy: These are the rights a person has to control the way her name and likeness (or any other personally identifying characteristics) are used. Rights of publicity give a person rights to control uses of their identity for commercial purposes. Rights of privacy protect against disclosure of private information in certain contexts.

Linda Joy: It depends upon what "rights" have been granted. Rights could mean a limited license, in which case you still own copyright or a complete assignment of all rights, in which case you don't still own copyright.

Linda Joy: I would still have to see the contract to answer. If you assigned your copyright, then the publisher would have the rights to license movies, cartoons, etc. without giving you additional compensation. If you only granted a license to publish, then you would still own the subsidiary rights for movies, etc. and you would be entitled to additional compensation

Linda Joy: Yes, provided you don't include other information that would let your readers figure out who she is.

Linda Joy: Yes. These are called subsidiary rights, and if you don't want to grant them to the publisher, your contract can say something like "all rights not granted herein are reserved to author, including without limitation all subsidiary rights"

Linda Joy: Probably. It might depend on what your contract says but under general contract law you can rescind a contract if it appears certain the other party will not perform their obligations.

Linda Joy: Under copyright law, you can use anybody else's research so long as you don't use their copyrightable expression. In other words, you can report on the same information the other author developed, but you can't plagiarize her text. Ethically, of course, it is best to cite your sources. But that is an ethical rather than a legal requirement.

Linda Joy: Yes. But be careful about quoting too much. If you use word-for-word text from the original source, that could be copyright infringement. Fair use only allows you to quote extensively if you are criticizing or commenting on the original work, rather than repeating it as part of your own content.

Linda Joy: It depends upon whether doing so would allow your readers to figure out that she is the judge being interviewed.

Linda Joy: This is a complicated subject, but I will give a few guidelines:
- you don't need permission to include accurate information about famous or public figures
- you don't need permission to mention famous people, cartoons, etc. when you are referencing or reflecting their role as cultural phenomena
- you could get into trouble if you are using their names in a commercially competitive way, e.g., in the title of a book so that it looks like your work is officially sponsored or associated with the famous people or the owners of the cartoons.

Jan: So...it would be okay if I had a character who had a crush on say...George Clooney. And put posters up of George Clooney (in the story).

Linda Joy: Yes

Jan: Could I have George answer her fan letter or would that be a bit no no?

Linda Joy: Yes. That would be okay, so long as its clear you are writing fiction.

Jan: Cool.

Linda Joy: You can simply adopt your pen name. There's no legal requirements.

Linda Joy: Yes. The rules are complicated, because several different copyright laws and different schemes for copyright terms have been in effect. Generally, the rule is life of the author plus 70 years.

Linda Joy: It depends upon whether that would matter to the publisher. Usually it won't matter unless the audio tapes were still a potential conflict in the marketplace. But if you are representing this ms as an unpublished work, you might want to explain about the tape.

Linda Joy: It depends upon whether the song might still be protected by copyright.

Linda Joy: Anything published or registered before 1923; and any work whose author has been dead for more than 70 years.

Linda Joy: It costs to register your copyright.

Linda Joy: That's a very broad question. I would say: - what kind of rights are you granting the publisher, e.g., per the prior discussion, are you giving a limited license, are you giving subsidiary rights, etc. also what is the royalty rate, are your warranties reasonale, is there a draconian indemnity provision, etc.

Linda Joy: It sounds like that would be a derivative work, in which case you need the copyright owner's permission. That might be the previous book's author or publisher. Any potential publisher for the sequel will want to be assured that you have permission.

Linda Joy: It is transferred as part of the estate, either by the author's will or intestate succession (rules about how property is distributed when there is no will). These rules vary state to state.

Linda Joy: Yes. However, there is one opportunity for the author to regain copyright. Under the copyright law, the author (or her heirs) can revoke a copyright assignment 35 years later.

Linda Joy: It's difficult to get protection for board games. At least under copyright law the actual way the game is played cannot be copyrighted. However, all of the expression, e.g., text, illustrations, etc. can be protected. Under trademark law, the name of the game can be your exclusive trademark. I'm not that familiar with patent law, but I think it would have to be very different from other board games to qualify for patent protection. Also, unfortunately there is no inexpensive way to get a patent. It's a very involved and expensive process.

Linda Joy: Just to reiterate, your article is protected by copyright the minute you write it. You should worry about registering your copyright in anything that the public will have the opportunity to copy because registration gives you the tools to fight infringement. If you retain your copyright, some courts have said the magazine copyright registration won't protect your article.

Linda Joy: It all depends upon your contract. You can assign your copyright to the publisher, or you can grant a license to them for certain rights to reproduce your work.

Linda Joy: I have heard this also. But I haven't encountered that attitude from publishers.

Linda Joy: Usually there is a provision that says the author can purchase so many books at cost or a certain discounted price.

Linda Joy: Usually this is understood but of course it doesn't hurt to make it explicit.

Linda Joy: Yes

Linda Joy: That's where the publisher has you promise to pay for any costs of a lawsuit or an infringement claim if someone alleges that you have infringed their work. The important thing is to tie any indemnity to a warranty by you that your work is original and TO THE BEST OF YOUR KNOWLEDGE does not infringe the intellectual property rights of third parties. This is important because it is possible to infringe trademark rights and certain other rights innocently, unlike copyright, where you have to know you are copying from another source.

Linda Joy: If you are submitting to a reputable publisher, I think it is fine not to register copyright in your manuscript ahead of time. However, a registration is your best protection against unauthorized copying, which could be an unscrutable publisher.

Linda Joy: Yes.

Jan: I've seen ads taken out by trademark owners in writers magazines where they say writers should say things like "Bo wiped his nose on a Kleenex tissue (and use the trademark symbol)." Now, that's what Kleenex would LIKE; what do we really have to DO?

Linda Joy: These trademark owners are trying to prevent their brand names from becoming generic. If a brand becomes a generic term through public usage, the trademark rights will be lost. This has actually happend to brands like aspirin and cellophane. But as a legal matter, you are not obliged to use the trademark symbol when you reference their products in that way.

Jan: But I have to say Brand Name + generic noun?

Linda Joy: No, you can use language however you like, so long as you are not using their brand name in a way that makes your readers believe you are sponsored by that product, per our discussion above.

Jan: I guess I was hoping there was a place where we're not hurting the trademark but not making stilted prose either.

Linda Joy: Kleenex and Xerox are particularly worreid about becoming generic. That's the razor's edge of having such a successful brand, that it becomes the way the public refers to all such products. As a practical matter, I wouldn't use a brand like Kleenex instead of tissue unless it is important to your story that the tissue is actually a Kleenex brand; but that's just my personal preference as a reader not to be bombarded with brand names.

Jan: Well, I know a kid could say, pass me a tissue...But if a kid needs a Band-Aid, they ALL say Band-Aid. So sometimes it's also a matter of making dialogue real.

Linda Joy: Of course. And staying true to how kids actually talk is your right as an author; and I don't think Kleenex has any legal claim they could make against you for doing so.

Linda Joy: The only entity I'm aware of is the BBB; but perhaps your colleagues have some ideas.

Jan: Unfortunately, the Better Business Bureau has given the stamp of approval to a lot of agents who do very naughty things. One agent had a positive BBB record right up until they were indicted for fraud, and it wasn't from lack of complaints. Once the BBB gives you a good rating, it's very hard to get a bad one so NEVER use the BBB as your own background check for any agent or publisher. But you can contact Writer Beware...they keep a database of agents and publishers for a purpose of helping people avoid those who do unacceptable things.

Linda Joy: However I believe their evaluations are subject to revision if they receive new reports?

Jan: True, if they receive enough reports -- surely they would change a rating. Now, back to copyright...

Linda Joy: Yes. Registration is like an official recordal of the copyright that you already own. But you can't do much about copyright infringement unless you have a registration.

Linda Joy: Intellectual property rights is the umbrella term for a variety of non-tangible proprietary rights - in ideas, artistic expression, your own identity, etc. as opposed to material property. So intellectual property includes copyrights, trademarks, patents, publicity rights, privacy rights, trade secrets, etc.

Jan: Well, that wraps up our time -- this has been really hugely informative. You fielded a lot of questions tonight. Thank you so much!

Linda Joy: You are very welcome.

Jan: I just wanted to add that Linda Joy has GENEROUSLY offered to answer any questions you might have lingering from this chat. She will NOT give specific legal advice for your situation but she will give general information about intellectual property law and writers. To contact her -- just email to LEGALITIES@owe.com.