I am very excited to have my old friend attorney Anthony Timpano visiting us today to answer several of your legal questions. The publishing business has become more complex than ever especially with the proliferation of self-publishing vehicles, fan-fiction sites, social media outlets, foreign publication rights, and the rise of multi-media distribution deals. Tony has been on both sides of the negotiating table having worked for both large media corporations and representing talent. With over 20 years in the business Tony has generously offered to lend his experienced voice to answering your questions.
It is not uncommon that I am approached by client writers regarding the use of third-party intellectual property in works that they (the client writers) intend to create or have created. Most commonly, the concern is whether or not the client’s intended use of another’s copyrighted written work (e.g., a stanza from a poem, a paragraph from a novel, lyrics from a song) requires clearance (obtaining authorization) from the copyright owner/controller of the prior written work. Sometimes, the issue doesn’t involve copyright issues at all, and is one that must be examined under relevant state law or federal trademark law. While each scenario should be examined on an individual basis (an examination which should be done in consultation with an attorney versed in intellectual property and media law), a writer would be well-advised to familiarize himself/herself with relevant laws to avoid any potential conflicts that could create obstacles to publication.
In an effort to provide a broad illustration of the varying issues that client writers often face, I have selected a few questions posed by members that serve as working examples. By no means are the answers provided below intended to be an exhaustive recitation of applicable law and are not intended to provide legal advice to the inquiring party or the reader. The information provided is strictly for illustration purpose only and should not be relied on as legal advice or as a substitute for legal counsel.
QUESTIONS FROM OUR WRITERS:
1. I’ve written a novel in which I quote a fragment of a line from The Love Song of J. Alfred Prufrock by T. S. Eliot, about 10 lines from Dover Beach by Matthew Arnold, an entire poem by Robert Louis Stevenson and the last verse of Reluctance by Robert Frost. These authors are all dead, and my publisher does not think I need permission. Is he correct?
This question raises multiple copyright concerns, including issues that may be impacted by foreign intellectual property law, and possibly international copyright treaties (Matthew Arnold was a British Subject, Robert Louis Stevenson was a Scotsman, T.S. Eliot was born an American, but later became a British Subject (the country where these prior works were created is relevant to a thorough legal analysis). For purposes of this discussion, we’ll examine this question under a hypothetical assumption that these underlying works were authored in the U.S. and that U.S. Copyright Law governs.
The heart of this question is whether the author’s death is relevant to the “term” of copyright for each of these works (i.e., whether these works are subject to copyright protection or whether they have fallen into the public domain by virtue of an expiration of the copyright term). If the work is not in the public domain, then permission may be required (unless the use is within the scope of “fair use” (as discussed below).
Under current copyright law, the term of copyrighted works created by individuals (opposed to those created by corporations or some other legal entity) in the U.S. is measured, in some cases, on the life of the author plus a statutory period of time (for works created under the 1976 Copyright Act, the current term of copyright for individual works is life of the author plus 70 years). So, if we were dealing with works subject to the current Copyright Act, the date of the author’s death would be relevant to the analysis, but that is not the case. All of the prior works referred to in the question were created prior to the enactment of the 1976 Copyright Act, and depending on their date of publication, may be subject to protection as a work originally governed by the 1909 Copyright Act (some of the cited works pre-date 1909 and therefore would be public domain, assuming for our purposes that the U.S. was the country in which they were authored).
The term of the 1909 Copyright Act was divided into two 28 year periods (which ran from the date of publication) that required renewal by the copyright proprietor following the initial 28 year period. Failing to renew the copyright for the renewal period placed the work in the public domain (it is important to note that some works of note fell victim to this hole in copyright protection and fell into the public domain).
In 1998, the Copyright Term Extension Act (also known as The Sonny Bono Act) extended the term of active 1909 copyrights by an additional 20 years; effectively giving 1909 works copyright protection for a period of 95 years from date of publication (in practical terms, it means that works published in 1923 or afterward that are still subject to copyright protection won’t fall into the public domain until 2019 or afterward). So, even though some of these authors have been dead fifty years or more, that does not mean their works are part of the public domain.
As you can see, without conducting a proper copyright search, there is no definitive answer based solely on the fact that the author’s have passed on. (And remember, this analysis is limited to a hypothetical-at least some of these works are foreign works which are/were subject to the term of copyright in the country of authorship. An analysis of copyright under applicable foreign law and international treaties would have to be done).
2. Exactly how much text can be written about a specific property in a novel before permission is needed? I’ve been told by publishers less is better.
Section 106 of the Copyright Act grants to the owner/controller of copyrighted works the following exclusive rights: to produce copies or reproductions of the work and to sell those copies; to import or export the work; to create derivative works(works that adapt the original work); to perform or display the work publicly; to sell or assign these rights to others; to transmit or display by radio or video. Each of these “exclusive rights” means that only the copyright owner/controller is free to exercise those enumerated rights, and others are prohibited from using the work without authorization.
Not to lose hope, there are codified limitations on the owner/controller’s exclusivity which enables other to use all or a portion of the work under limited circumstances. Some of these limitations can be found under what is called the “Fair Use” exceptions under Section 107 of the Copyright Act (some examples of what has been considered to be “fair use” include commentary, criticism, news reporting, research, teaching, library archiving and educational purposes). This limitation on the exclusivity provides for the unlicensed (but legal) citation or incorporation of copyrighted material in another’s work under a four-factor balancing test: the purpose of the work (usually viewed in terms of commercial or non-commercial use), nature of the original work, amount and substance of work used, and the potential market effect the use has on the original work.
While the “fair use” test seems rather straight forward, the vagueness of the language in the law provides less than a bright-line test for infringement. In application, the courts have emphasized certain prongs of the test with greater weight as determined by the salient facts of the matter at hand. That being said, as a general “rule of thumb”, the more the underlying work is copied, the greater the chance that the use falls outside the protection of “fair use”. With that being said, there are no specified numbers of words, lines or paragraphs that can be taken from another’s work without permission.
3. What are the rules on using (e.g. mentioning) intellectual properties in a novel? I’ve always been told by publishers the product or property has to be mentioned in a good way. No negative feedback. Can you clarify this rule please?
The use of a company’s name, product name, logo or slogan without authorization gives rise to potential claims under state laws (usually under a theory of unfair business practices, common law trademark, etc.) and/or federal trademark law. Federal trademark law (and to the extent state laws are modeled after the federal law, state laws as well) allow a limited “fair use” of another’s trademark/service mark for limited purposes such as comparative advertising or other nominative uses (e.g., factual reference). If a company’s name or product is used in a negative light or false light, then the use may be actionable as libel (in some cases libel per se). Each intended use should be reviewed carefully in consultation with a qualified attorney.
4. Do I need to copyright my manuscript before sending it to a publisher and/or an agent?
Under U.S. Copyright Law, a copyright in an original work of authorship is created as soon as the expression of the idea becomes fixed in some tangible form. In short, you have copyright protection in your manuscript without registration. That being said, the registration of your manuscript with the Copyright Office provides greater protection in terms of your legal remedies against potential infringers (for example, the right to claim statutory damages). Registration also provides one very important thing; it provides a date of authorship which can be used to defend against/pursue claims of infringing works created after the date of authorship. (Nota bene: do not rely on a self-mailed, post-marked envelop for proof of date of authorship. This so-called “poorman’s copyright” has been held inadmissible in copyright cases).
5. I’m working on a paranormal thriller and I want to put on the trial of the century. I was thinking Thurgood Marshall on the bench and Clarence Darrow defending. Would I need special permission from anyone to use famous dead guys in my story?
Briefly, the answer to your question is yes. The right to commercially exploit the a name of a celebrity, even a dead one, is governed by so-called rights of publicity; generally matters that fall under relevant state laws (if the name is also a registered trademark, legal action could be brought under federal trademark law). Generally, the rights are treated as a property right that may survive the celebrity’s death. Since laws vary state-by-state, I would seek authorization from the proper parties before proceeding.
6. I’m thinking of making my own book trailer. Do I need to get permission to use the background song?
The right to synchronize songs/audio recordings to visual images or motion pictures requires two separate licenses; a synchronization license from the songwriter(s) and/or music publisher(s) and a master use license from the owner of the sound recording (the record company/production company or artist if the artist is not signed to a label).
ABOUT TONY TIMPANO
Tony Timpano is a seasoned entertainment/media attorney and business and legal affairs executive with a proven track record for guiding businesses and individuals through the ever-evolving dynamics of the entertainment industry. He has held senior executive positions with Sony Music’s RED Distribution, Edel North America, ICON Entertainment, and most recently, as a consultant to the New York based record pomotion/distribution/marketing services company Total Entertainment Asset Management.
Drawing on his varied 20 year background in entertainment and media, Tony combines innovative thinking and entrepreneurial spirit with solid business acumen. As the Vice President, Business and Legal Affairs for RED Distribution, Tony broke new ground in negotiating the company’s first equity purchases in distributed labels. He later forged change in the dynamics between independent and major record companies by co-developing the RED-Sony “upstreaming” mechanism; a contractual system that delivered multi-platinum artist Los Lonely Boys and break-through reggae artist Matisyahu to Sony and, became a business model that was adopted throughout the industry.
Prior to entering the corporate arena, Tony was an attorney in private practice specializing in entertainment and intellectual property transaction matters for entertainment industry and fine arts clients. He has since returned to private practice. His practice focuses on personal representation in all aspects of the entertainment, arts, media, sports, and licensing industries, including, musicians, songwriters, music producers, photographers, independent labels, writers, publishers, independent film makers, production and distribution companies, outdoor athletes, television personalities, internet developers, licensors and licensees, photographers, models, as well as talent agencies and personal management companies.
He can be reached directly: firstname.lastname@example.org (203) 243-2047