Can I Use a Photograph of Scarlett Johansson on the Cover of My E-Book?

Let's say I've written a memoir that I'm planning to self-publish. And let's say I've also decided that, on my book cover, it would be great to use a dazzling photograph of Scarlett Johansson that I've licensed from a stock photo service, such as Getty Images.  Alas, Ms. Johansson has no connection whatsoever to me or my book, but, hey, her picture on the cover certainly can't hurt my sales.

Can I -- and can you -- lawfully use a picture of an individual on a book cover without his or her permission?  It depends.

There are two separate legal considerations in publishing a photograph of a person, regardless of whether he or she is a celebrity.  

First, you must consider the rights of the photographer who ordinarily owns a copyright in the photographs that he takes.  Assuming that an image is not in the public domain, you will need the photographer's permission (or the permission of the photographer's authorized agent or of a stock photo service that controls the rights, etc.) to use the photograph for any purpose anywhere in your book.  By all means, don't simply copy and re-purpose a photograph from the Internet; that would almost surely be a copyright infringement.  (Of course, if you snap a photograph yourself you are, with some exceptions, presumably the copyright owner.)

But obtaining the necessary copyright clearance may not be enough.

Second, you must consider the rights of any identifiable persons depicted in the photographs. Those rights may, in turn, depend upon the context in which the photograph is to be used. 

A person's right to control the use of her own image (as well as certain other aspects of her persona, such as name and voice) is called the right of publicity.  There is no federal right-of-publicity statute in the United States, although some advocates favor such legislation. Instead, the right of publicity is governed by state law.  The law varies considerably from state to state, but two general principles apply.  First, the use of the image of a living person in advertising or for promotional purposes, without written permission, is unlawful almost everywhere in the United States.  So, obviously, SodaStream could not have aired this politically controversial commercial without Scarlett's written permission.  Second, consent from the subject of a photograph is not needed to use the picture in connection with genuine news and informational reports. For example, The Washington Post did not need Scarlett's permission to use her photograph in connection with this article concerning her appearance on the Colbert show.  Nor would her consent be needed to include her photograph in an informational work, such as an encyclopedia or this Wikipedia article about her. That said, there are countless uses that fall somewhere on the spectrum between a indisputably permissible editorial use and an indisputably impermissible advertising use.  To complicate matters further approximately 20 states hold that the right of publicity continues for some years after an individual's death, and is enforceable by the heirs of the deceased.

So what about putting Scarlet Johansson on my book cover?  Well, context is everything.  

First an easy case:  The courts have almost uniformly held that you can use a individual's picture, without his consent, on the cover of a book that is about him, e.g., on an unauthorized biography. (See, for example, this decision involving the Black Panther leader Bobby Seale.)  But my book is about me, not about Scarlett.

Another easy case: Singer-songwriter Tasleema Yasin successfully sued a publisher for using her photograph on the front cover of a novel entitled Baby Doll without her permission.  The court held that, because Ms. Yasin had no connection to the subject matter of the novel (indeed, her name wasn't even mentioned in it), the use of her photograph was “purely for marketing and trade purposes; solely as a means to attract customers and generate sales" and was therefore unlawful.  (See also Dorsey v. Black Pearl finding that R&B singer Marc Dorsey was likely to succeed on his claim that the unauthorized use of his photograph on the cover of novel was a violation of his right of publicity.)

But things can get tricky when the person depicted on a book cover has at least some tangential relation to the subject of the book.  For example, in Christianson v. Henry Holt, a waitress sued the publisher for the use of her photograph on the cover of the well-regarded book Nickel and Dimed by Barbara Ehrenreich, which dealt with the problems faced by the working poor.  The plaintiff had previously consented to to the use of her photograph in connection with a Fortune magazine article about "single mothers supporting their families on low-wage jobs," but she was not asked for permission to use her image on the book jacket published years later.  The publisher argued that the photograph had a reasonable connection to the book and therefore the right of publicity claim should be dismissed, but the court disagreed:

At no point is Plaintiff, her photo, or the restaurant where she appears ever part of the subject matter of the book. If Plaintiff or the restaurant where she appears had been mentioned even once in Nickle and Dimed then this Court might have doubts about this ruling. But this is not the case, and as a result, the book and the photo do not bear a reasonable relationship with each other.

Another court reached the opposite conclusion in a case with somewhat similar facts.  Dallesandro v. Henry Holt & Co., involved a book cover that depicted the plaintiff longshoreman in conversation with Father John Corridan, a priest who crusaded against corruption on the docks and was an inspiration for the film On the Waterfront. Even though Mr. Dallesandro wasn't mentioned in the text of the book, the court found that his picture was illustrative of a matter of genuine public interest, and therefore there was no violation of Mr. Dallesandro's right of publicity. The fact that the plaintiff was a longshoreman and had, in fact, spoken with Father Corridan was deemed sufficient to defeat the right of publicity claim.  However, it was a close call; one of the three judges dissented, arguing that the connection between the photograph of Mr. Dallesandro and the subject matter of the book was too remote to justify using his image.

Keeping these general principles in mind, it would be risky business for me to use Scarlett Johansson's photograph on the cover of my memoir,  I don't have her consent and my only connection to her is having purchased tickets to four of her movies over the years (which I enjoyed but didn't mention in my [hypothetical] memoir).  Similarly, if you are planning to use a photograph of a person, living or dead, on your book cover, without written permission, it is prudent to ask a lawyer whether your cover might get you into hot water.

When photographs of people appear inside your book, they are less likely to give rise to legal problems because such uses are less likely to be deemed uses for advertising or promotional purposes.  But, even then, there should be some "real relationship" between the pictures and the content of your book.  (See the Finger v. Omni  Magazine case which liberally interprets the "real relationship" test under New York law.)

If you obtain a photograph from a stock photo house to use on your book cover, keep in mind that the license agreements often cover only the copyrights in the photographs.  If you're using the image on a book cover, you should insist upon seeing a copy of any applicable right of publicity release and read it carefully to make sure it allows for your intended use. And keep in mind that, while some stock photo houses provide indemnifications to their customers, those assurances may be limited to the amount of the license fee, which is woefully inadequate to compensate you in the event of a legal claim.

Finally, be careful not to state or imply that a person depicted on your book cover endorses or approves of your work, if that isn't true.  Misleading use of someone's name or likeness implicates other areas of the law, such as false advertising.  See, for example, Rostropovich v. Koch Int’l Corp., 34 U.S.P.Q.2d 1609 (S.D.N.Y. 1995), in which cellist Mstislav Rostropovich claimed that the use of his likeness on CDs featuring his early performances would cause consumers to mistakenly believe he had endorsed the CDs.

The right of publicity has many nuances. Edward Rosenthal's good lawyerly discussion of the law can be found here. A less detailed summary from the Digital Media Law Project at Harvard can be found here.  Professor Jennifer Rothman's state-by-state "roadmap" can be found here.  Some, but by no means all, other countries recognize rights of publicity, also known as "personality rights"; see a Wikipedia listing here.

The Unoriginal Sin: Differences Between Plagiarism and Copyright Infringement

Plagiarism, which many people commonly think has to do with copyright, is not in fact a legal doctrine. True plagiarism is an ethical, not a legal, offense and is enforceable by academic authorities, not courts. Plagiarism occurs when someone – a hurried student, a neglectful professor, an unscrupulous writer – falsely claims someone else’s words, whether copyrighted or not, as his own. Of course, if the plagiarized work is protected by copyright, the unauthorized reproduction is also a copyright infringement.

By the way, I cribbed every word of that first paragraph from Black's Law Dictionary, which, in turn, was quoting (with attribution) from copyright guru Paul Goldsteins' book Copyright's Highway.   If I hadn't bothered to mention Professor Goldstein, I would have been guilty of the sin of plagiarism, but not the actionable offense of copyright infringement.  (As a matter of copyright law, my quotation from Goldstein is, I trust, safely within the bounds of "fair use.")

In the words of Merriam-Webster Online, "plagiarism" is the act of steal[ing] and pass[ing] off (the ideas or words of another) as one's own; use [of] (another's production) without crediting the source."   By contrast, "copyright infringement," occurs "when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner."  (See the definitions section of the U.S. Copyright Office website.)  Similar, but not exactly the same.

Many acts of plagiarism are not copyright infringements.  And many acts of copyright infringement do not arise from plagiarism.  This post seeks to clarify the differences between the two transgressions -- differences that writers (and sometimes judges) often tend to blur.  Indeed, even Professor Goldstein engaged in a bit of blurring; it would have been more precise to say that "if the plagiarized work is protected by copyright and the copying is substantial, the unauthorized reproduction may sometimes also be a copyright infringement."

Copyright infringement is a legal offense against property rights, whereas plagiarism is an ethical failure to honor one's intellectual forefathers and foremothers.  Plagiarism does not amount to copyright infringement unless (a) the plagiarist has republished copyrightable expression of another, and (b) the amount of copied expression exceeds the boundaries of fair use.  For example, facts and ideas are not protected by copyright; only original "expression" is.  So, an academic who harvests facts from another scholar without giving due credit may be a  plagiarist, but, if she expresses those facts and ideas in her own words, she is not an infringer.  Or to take another example, works first published in the U.S. before 1923 are no longer in copyright.  Consequently, a novelist who lifts sentences and scenes from the short story sequence Winesburg, Ohio (first published in 1919 and now in the public domain in the U.S.) without crediting Sherwood Anderson would also be a plagiarist, but not an infringer.  When I pass off as my own original work ideas or public domain expression or sufficiently brief snippets of expression taken from others (e.g., my quote taken from Goldstein, devoid of quotation marks), I may have  -- depending upon the context -- committed plagiarism because, in the words of Judge Richard Posner, "readers of the new work are invited to think that those features are the inventions or discoveries of the plagiarist."  Yet I could not successfully sued for copyright infringement.

Conversely, if I quote too lengthily from the copyright-protected works of others, I may be a copyright infringer, even though I have carefully and fully acknowledged the author and work that I am quoting.  Thus, for example, in one well-known copyright case, the poet Ian Hamilton was found to have committed infringement by quoting too extensively from J.D. Salinger's unpublished letters in a biography of Salinger, even though Hamilton meticulously footnoted each quotation.

Examples of plagiarism are legion.  The Wikipedia offers a long, varied, and fascinating list of plagiarism controversies.  (Did you know that Helen Keller was caught up in a plagiarism scandal?)  Caslon Analystics of Australia has published another inventory of alleged incidents of literary plagiarism.  Wikipedia has a discussion of the theory and history of plagiarism here.  And Caslon Analytics's useful overview of plagiarism (again, with an Australian slant) may be found here,

I have just finished reading Judge Posner's book entitled The Little Book of Plagiarism, which provoked this post.  Judge Posner touches upon many of the famous unoriginality controversies of recent years, including those involving Doris Kearns Goodwin, Joe Biden, Stephen Ambrose, Laurence Tribe, and Kaavya Viswanathan.  (As Judge Posner points out, an uncommon number of such scandals seem to implicate Harvard personalities, not because plagiarism is especially common at Harvard, but because exposing the lapses of the academic elite gives the press and readers an extra shot of schadenfruede; see the Harvard Plagiarism Archive here for a master list of such controversies since 2002.)

Judge Posner offers an especially good explanation as to why some unacknowledged copying is plagiarism, and some is not:

A judgment of plagiarism requires that the copying, besides being deceitful in the sense of misleading the intended readers, induce reliance by them. 

* * * *

The reader has to care about being deceived about authorial identity in order for the deceit to cross the line to fraud and thus constitute plagiarism.

I am also indebted to Judge Posner for teaching me the word "cryptomnesia," which refers to "unconscious plagiarism, a sin of neglect rather than intention and, therefore, less blameworthy."  When caught in the act, almost all plagiarists, including Helen Keller, plead cryptomnesia.  But Judge Posner cites research suggesting that cryptomenesia is almost always a fallacious excuse when the copying consists of "verbal passages of more than trivial length."

The legal remedies for copyright infringement are powerful and plainly set forth in federal law.  (See Chapter 5 of the U.S. Copyright Act.)  But, as per Professor Goldstein's observation quoted above, the legal remedies, if any, for plagiarism are by no means clear-cut.

For many years, authors (and other creative people) sought to use the federal Lanham Act as a basis for litigation against those who used their work without proper authorization or credit. That legal strategy reached a dead end when the Supreme Court held in the 2003 case of Dastar v. Fox that the Lanham Act cannot be used to "creat[e] a cause of action for, in effect, plagiarism -- the use of otherwise unprotected works and inventions without attribution."  Law geeks may wish to take a look at this law review article -- and this one, too -- deploring how Dastar and its progeny effectively eliminated the Lanham Act as a remedy for failure to give credit where credit is due.  Without resort to the Lanham Act, victims of plagiarism -- who do not also have a viable copyright claim -- are left with few means of legal recourse.  In commercial settings, a buyer of a book riddled with plagiarism might theoretically seek to use consumer deception statutes to achieved redress, but there is no economic incentive to sue to recover the price of a book, and a plagiarized author may not even have standing to assert such a claim. See this earlier post discussing some less-than-satisfactory post-Dastar options, including ethical complaints to professional organizations and academic institutions.

After Dastar, shaming (either in private communications with the plagiarists' supervisors or in published accusations) remains the most effective tool for attacking plagiarism and plagiarists.  Timothy Noah of Slate offered this original idea for formalizing the shaming process in the book publishing industry; alas, it is not likely ever to be adopted.  And beware: all too often, accused plagiarists respond to shaming efforts with libel lawsuits against their accusers, as discussed in this article from The Chronicle of Higher Education.

In Europe, the legal doctrine of droit moral or moral rights gives authors the ability to claim a right of attribution in their works.  However, even in Europe, droit moral lawsuits are not routinely used to provide a remedy for garden variety plagiarism.  The United States recognizes droit moral or moral rights only with respect to certain limited categories of visual arts.  (See this brief summary of protections accorded by the Visual Artists Rights Act  in the United States.)  Writers do not have equivalent protections for the "right of attribution."

Interestingly, in June 2011, the Third Circuit Court of Appeals seems to have imported into the Digital Millennium Copyright Act ("DMCA") what is, in essence, a kind of cause of action for plagiarism in certain narrow circumstances.  The kinky case involved two New Jersey shock jocks, who hired a photographer to take a picture of them, apparently nude, with their manliness concealed by a sign bearing their station's logo, WKXW.  The photograph originally appeared in New Jersey Monthly.  Later, however, the station scanned the photograph, stripped out the photographer's credit line (without permission), posted it on the station's website, and invited fans to manipulate the image.  The photographer sued for copyright infringement and, based upon some on-air comments that the shock jocks made about him, defamation. The district court dismissed the photographer's claims, but the Third Circuit reinstated them, concluding, among other things, that the photographer's credit line was "copyright management information," and the digital manipulation and removal of the credit potentially violated the DMCA. Here is the always-entertaining Eriq Gardner's summary of the case.  And you  can see a portion of the image in question in this analysis of the case by New York lawyer Peter Fakler. You can read the entire decision here.  Of course, the DMCA does not provide a tool for addressing plagiarism outside of the context of digital manipulation, but it is an interesting new tactic in the age-old wars over plagiarism.

This New York Times article suggests that plagiarism is on the rise among college students and others, who find it tempting and easy to cut and paste into their papers the expression of others available the web.  Plagiarism.org's website cites a national survey published in Education Week that found that 54 percent of students admitted to plagiarizing from the internet.  Schools have responded by requiring the use of plagiarism-detection software, such as Turn-It-In, created by IParadigms.  

My firm recently handled case where plagiarism detection intersected with alleged copyright infringement.  Several students from McLean High School in northern Virginia tried to turn the tables on IParadigms, and sued the company for copyright infringement.  In checking for plagiarism, Turn-It-In software compares student papers not only to a huge textual database drawn from the internet, but also to an archive consisting of virtually all past papers submitted by students for scanning and review by the Turn-It-In software.  This archive is important to the review process because it enables the software to determine when students have copied from each other rather than copying from the internet.  The database of student papers is not published in any way, but merely resides on computers in the form of digital files used to carry out the comparisons.  The students contended that, in maintaining copies of their papers in these digital files, IParadigms infringed their copyrights in those papers.  In submitting their papers, the students had agreed not to assert any claims against IParadigms, but they argued that the agreement was against their will and otherwise unenforceable.  The courts disagreed and found that the archiving of the students' papers was effectively consented to and, in any event, a "fair use." Here is the opinion of the Fourth Circuit Court of Appeals affirming the lower court's decision of non-infringement.  (My firm represented IParadigms.)

One of the things I do in my legal practice is review manuscripts before they are published for potential legal problems.  The legal vetting task is fairly clear-cut when it comes to identifying issues such as libel or invasion of privacy.  However, it is often nearly impossible for a lawyer (or an editor) to spot potential copyright infringement when an author has plagiarized his sources, failing to use quotation marks or endnotes.  As a result, some publishers are now sometimes using anti-plagiarism software to detect unauthorized copying in manuscripts, particularly in high profile books by celebrity authors.  According to this article in The Chronicle of Higher Education, academic journals are similarly "turn[ing] the anti-plagiarism software that professors have been using against their students on the professors themselves."

As Judge Posner is at pains to point out, what constitutes plagiarism and what does not is not always clear.  Many universities publish useful online resources for identifying and preventing plagiarism, including this one maintained by the UCLA libraries.  And here is the American Historical Association's Statement of Standards of Professional Conduct, which includes a fine discussion of plagiarism, and the sage advice: "No matter what the context, the best professional practice for avoiding a charge of plagiarism is always to be explicit, thorough, and generous in acknowledging one's intellectual debts."

Which reminds me, I almost neglected to mention that the headline to this post is a knock-off of the title of this great article by Roy Peter Clark on plagiarism in the newsroom, which originally appeared in The Washington Journalism Review. Clark's article is filled with examples of journalistic plagiarism and offers good counsel on distinguishing between permissible re-purposing and unethical, intellectual fraud.

Actually the phrase "unoriginal sin," has been used by many other writers in connection with articles about plagiarism.  (See this Google search report.)  Likely, this is the result of independent creation -- numerous writers separately coming up with the same pun, though it wasn't at all original on my part.  Suffice it to say that not every lifted phrase or unattributed joke is a sin.  Remember, Judge Posner's point that there must be some element of deceit and the originator and/or the reader/listener must have some reason to care about the undisclosed repurposing.  This well-known anecdote illustrates the irrepressible tradition of passing off the jokes of others as one's own:

After hearing his friend James McNeill Whistler make an especially witty remark, Oscar Wilde said, "My God, James, I wish I had said that."  To which Whistler replied, "You will, Oscar, you will."

Cultivating a Healthy Loathing for "Work Made for Hire" Agreements

The "work made for hire" clause is the bete noire of freelance writers.  While the clause is frequently very unfair to authors, it is not unfair in all circumstances; it's never your friend, but there are times when it is not necessarily your enemy.  Following are twelve questions and answers that may help you to cultivate a healthy, not-unduly-paranoid loathing for "work made for hire" agreements.

But first, in digesting this somewhat geeky post, it is useful to know that, as explained here, any "original work of authorship" is subject to copyright protection the moment that it is "fixed in any tangible medium of expression."  For example, a love letter is instantaneously subject to copyright protection as it flows out beneath your fountain pen.  By way of further background, the U.S. Copyright Act uses the term "author" to refer to all types of creators: writers, composers, visual artists, choreographers, filmmakers, architects,  musicians, computer software programmers -- anyone who creates a copyrightable work.  (See Section 102 of the Copyright Act for a general list of the types of copyrightable works.)  The "work made for hire" doctrine addresses the question:  Who is the "author" of -- and the owner of the copyright in -- certain types of works at the moment when they come into existence?

1.  What is the essential difference between a "work made for hire" and the typical copyrightable work?  Ordinarily when you create a copyrightable work you are its "author" and, at least initially, the owner of the copyright.  (See Section 201(a) of the Copyright Act.) A "work made for hire" is a notorious exception to that default principle.  If a work qualifies as a "work made for hire," your employer (or the person or entity that commissioned you to create the work) is deemed the "author" and initial copyright owner, even if he/she/it contributed no copyrightable expression whatsoever to the work.  In other words, the employer (or commissioning party) owns all rights in the work; you own none -- ever (unless you enter into a contract in which your employer -- or the commissioning party -- bestows some rights upon you). No wonder that the American Society of Journalists and Authors has called work-made-for-hire agreements "all rights contracts on steroids."  (See the ASJA's excellent primer on all-rights agreements here.)

2.  What practical difference does it make whether you sign a "work made for hire" agreement or simply grant broad rights in your work to the commissioning party?  There are two major downsides to a "work made for hire" relationship.  First, as stated, you never have rights all in a work that you create on a "for hire" basis.  Everything embraced by the copyright belongs, at all times, to the commissioning party.  So, for example, if you were to create new works including characters or plot lines that appeared in the "work made for hire," you could be found to have infringed the commissioning party's copyright.  Of course, as discussed in this earlier post, an assignment of your entire copyright interest would put you in a similar "rightless" position.  This brings me to the second major downside: under the Copyright Act, a writer who assigns his copyright at least retains a right to terminate that assignment between the 35th and 40th year after it is made. By contrast, a "work made for hire" is forever.  Since you are not deemed to be the "author" of a "work made for hire," you or your heirs cannot exercise the termination right.

For example, in the Bob Marley case, the court found that five record albums recorded by the great reggae star between 1973 and 1977 were "works made for hire."  Marley therefore never owned the copyrights, which belonged instead to the "employer," Island Records, a subsidiary of Universal Music Group.  Consequently, Marley's family was unable to exercise the termination right to recapture ownership of the albums after 35 years and thereby negotiate a better financial deal for the rights going forward.  Of course, the great majority of works created in any medium have no commercial value by the time the recapture right kicks in.  However, if your work, like Bob Marley's, is one of the rare long-lived exceptions, the fact that you signed a "work made for hire" agreement instead of a simple grant of rights or even an outright copyright assignment could be crucial.  An "all rights contract on steroids" indeed.

3.  How paranoid should you be about "work made for hire" clauses in contracts for your freelance work?  Only reasonably paranoid.  For many types of mundane works, you may have no interest in ever creating derivative works or recapturing the copyrights in 35 years.  Freelance advertising copy.  Annual reports for corporations.  Beer making instructions.  Marketing brochures.  Press releases.  Technical writing.  I wrote all of those kinds of works in my days as a freelancer, before going to law school, and I have never regretted for a moment having no copyright interest in them.  On the other hand, I also published books, magazine articles, and op-ed pieces, and I would not have been pleased to sign "work made for hire" agreements for those works.  When, as a freelancer, you create a novel, a short story, a non-fiction book, a significant piece of journalism, a poem, a song, a play, a screenplay, or a variety of other works into which you pour something of your soul and which have at least some potential to be re-purposed (e.g., turning them into longer works, or re-using characters) it is entirely rational to be reluctant to sign a "work made for hire" agreement or, for that matter, any form of "all rights" agreement.  It's a complex personal, economic, and legal equation, which will vary from writer to writer and work to work.  There are some areas of writing, such as multi-authored textbook publishing, where "work made for hire" arrangements are commonplace.  There are other contexts in which a "work made for hire" contract is little more than a rights grab.  The various conventions of particular markets for writers are beyond the scope of this post, but are addressed in some of the online and printed references mentioned below.

4.  All right, then, when is a work a "work made for hire."  Under Section 101 of the U.S. Copyright Act, a “work-made-for-hire” can arise in only two circumstances: (1) when you, as an “employee,” create any type of copyrightable work within the scope of your employment, or (2) when you, as a non-employee, are specially ordered or commissioned to create one of nine designated types of works and you and the commissioning party agree in writing that the work will be a “work made for hire.” 

5. What are the tricky parts of the "employee" branch of the "work made for hire" doctrine?  The works you create for your employer within the scope of your employment are presumptively "works made for hire."  No written agreement is required.  For example, whatever I write for the law firm that employs me belongs to the firm, not to me.  If my firm is paying me for written work that I create on firm premises during regular business hours with firm computers, I don't find it objectionable that the firm owns all rights to it.  Controversies concerning employee-created "works made for hire" tend to arise in two areas.  First, there may be disputes as to who qualifies as an "employee," such that the copyright vests in the employer, rather than an independent contractor or freelancer.  That was the issue in the case of Community for Creative Non-Violence v. Reid in which the Supreme Court found that a sculptor was not an employee of the non-profit entity that retained him to create a sculpture.  Second, there may be disputes as to whether a work is created "within the scope" of the employee's job responsibilities.  If you work at The New Yorker as an editor during the day, your employer shouldn't own the short stories you are writing at home at night. While I am confident that The New Yorker does not make such an overreaching claim, other employers do sometimes include unfair anti-moonlighting clauses in their employment contracts or employee handbooks that purport to assert ownership over work created on the employees' own time.  (See this amusing blog discussing IP and moonlighting in practical terms.)  Anti-moonlighting rules may sometimes involve a "copyright assignment" issue rather than a "work made for hire" issue, but, either way, employees are too often disadvantaged by such clauses.

6.  In the non-employee/freelancer context, must there be a written agreement with the commissioning party in order for your work to be deemed a "work made for hire"?  Yes.  If you are not an employee of the person or entity that commissions your copyrightable work, then, in order for the work to qualify as a “work made for hire,” there must be a written agreement between the parties, signed by both of them. These days, an inked signature on a piece of paper may not necessarily be required.  But there must be something that qualifies as an “agreement” to which you personally affixed your name in some way. 

7.  Does a "work made for hire" agreement have to be made before you create your work?  Yes.  The parties must agree before the work is created that it will be a "work made for hire" belonging to the commissioning party.  Courts are divided on whether the parties can orally agree on a "work made for hire" arrangement beforehand, but wait until after the work is created to sign a written agreement.  Beware of efforts to recharacterize a work as a "work made for hire" after the fact.  Here is Ivan Hoffman's blog post on the regrettable practice of using after-the-fact check endorsements to memorialize the "work made for hire" status of a work.

8.  Does a "work made for hire" agreement have to include the magic words "work made for hire" for it to be effective?  Yes and no.  Ordinarily the agreement should use verbatim the magic words “work for hire" or “work made for hire” in order to give rise to a valid "work made for hire" relationship.  If it does not use those words, the agreement may be interpreted as giving rise to some other form of transfer of rights.  But be careful:  the courts have sometimes cut commissioning parties some slack in terms of the exact phrasing, as long as the intention is clear.  An agreement that speaks of the work as being “specially ordered or commissioned” or created “at the direction and expense” of another might conceivably sneak by.  (See the discussion "talismanic words" in this case.)

9.  Do all specially-commissioned, copyrightable works created by freelancers qualify as "works made for hire"?  No.  In an employer-employee relationship, any type of copyrightable work may be a "work made for hire."  By contrast, in a non-employee/freelance situation, only a copyrightable work that falls within one of nine categories specified in Section 101 of the Copyright Act can properly be deemed a "work made for hire," namely:

a work specially ordered or commissioned for use [1] as a contribution to a collective work, [2] as a part of a motion picture or other audiovisual work, [3] as a translation, [4] as a supplementary work, [5] as a compilation, [6] as an instructional text, [7] as a test, [8] as answer material for a test, or [9] as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

Not infrequently, through ignorance or subterfuge, a commissioning party will ask a freelancer to sign a "work made for hire agreement" for a type of work that can't be a "work made for hire."  For example, even if your contract for a novel says that it is a "work made for hire," it probably isn't. Similarly, in the Creative Nonviolence case above, a contract characterizing a sculpture as a "work made for hire" failed because a sculpture does not fall within one of the nine categories.  Usually, however, a sophisticated commissioning party will include a "belt an suspenders clause" that says, in essence, "if for any reason the work does not qualify as a 'work made for hire,' writer hereby assigns to the commissioning party all right, title, and interest in the work, including, but not limited to, all copyrights therein throughout the world." But, if there is only an assignment of copyright, rather than a "work made for hire" relationship, a writer would at least retain the right to terminate the transfer after 35 years (unlike the Bob Marley in the case discussed above).


10.  Are there other differences between a "work made for hire" and a conventional copyrighted work?  A few.  For example, unlike a traditionally authored work, for which the duration of copyright in the United States is the life of the author plus 70 years, a "work made for hire" enjoys a term of copyright that runs for 95 years from the date of first publication or 120 years from the date of creation, whichever is shorter.  But the essence of the "work made for hire" doctrine turns on copyright ownership and the absence of a termination right.

11.  Are there any limits on what an employer or commissioning party can do with a "work made for hire"?  Not many. Such limits as there are come from areas of the law other than copyright.  Right of publicity law or unfair competition law may prevent the proprietor of the work from using your name without your written permission.  And you can, of course, enter into a contract with the proprietor that imposes upon him any terms you both agree upon, such as the duty to pay you royalties or to obtain your permission for certain uses.  But absent a contract or right of publicity violation, the proprietor has free rein to create derivative works, combine the work with others, translate it, abridge it, change it, exploit it in all media  -- the full scope of rights of a copyright owner.

12.  What should you do when you are asked to sign a "work made for hire" agreement in a context where you believe it is unfair?  Propose a license of less extensive rights as an alternative, which gives other party what he really needs, but not the many rights he really doesn't need.  If that doesn't work, bargain for more money for derivative uses.  Or ask that the commissioning party to assign the rights to you after a period of years. Of course, if you have little or no bargaining power, the commissioning party may tell you to take it or leave it.  I you have a literary agent, she can offer you advice on the commercial realities of your particular situation.  If you don't have an agent and if it is a commercially significant project, it may be prudent to seek the advice of a lawyer concerning the contract language and your legal options.  See this earlier post on 44 sources of free or low-cost legal help for writers.

There is a wealth of good advice on how to respond when presented with a "work made for hire" contract in the ASJA primer mentioned above.  The Writer's Legal Guide also offers pointers on negotiating strategy, including the reminder that, if you do sign a "work made for hire" agreement, you should obtain a written promise of any authorship attribution you are seeking.  The Writer's Legal Guide also sagely advises that you try to bargain for a promise that, if the commissioning party cancels the project for any reason, the copyright in the work will be assigned to you.

For general information of the "work made for hire doctrine," the place to start is Copyright Office Circular 9.  There is also a short, helpful discussion of "works made for hire" at the KeepYourCopyright.org site.  The Professional Artists League has posted a feisty article on "work made for hire" abuses; while it focuses on visual artists, writers confront many of the same abuses.  New York lawyer Lloyd Jassin has written a good article on drafting "work made for hire" agreements, written primarily from the point of view of a publisher seeking to acquire works on a "for hire" basis.

Finally, please note that this post is highly U.S.-centric.  The "work made for hire" doctrine exists in some form in many countries, but the rules vary significantly from jurisdiction to jurisdiction.

Copyright in Fictional Characters: Can I Have Don Draper Make a Cameo Appearance in My Novel?

I'm throwing a dinner party in my novel. My guest list includes Don Draper, James Bond, Jack Ryan, Scarlett O'Hara, Dolores Haze a/k/a Lolita, and Elizabeth Bennett.  I don't expect my guests to say or do anything at my fictional party.  The question is:  Can they simply show up at the dinner table without my infringing the copyrights of Matthew Weiner, Ian Fleming, Tom Clancy, Margaret Mitchell, Vladimir Nabokov, and Jane Austen or their heirs?

Before trying to answer that (somewhat surprisingly complicated) question, let me introduce you to one of my guests.  Jack Ryan is known to millions of readers as a tough former Second Lieutenant in the Marines, a onetime CIA agent, and ultimately President of the United States. He appeared as a character in Tom Clancy's first novel, The Hunt for Red October, which was published in hardcover in October 1984 by the U.S. Naval Institute Press, a small publisher that was then primarily issuing works on naval history.  Ryan later reappeared in many other Clancy novels.  But did you know that Jack Ryan was the subject of allegedly infringing use by none other than . . . Tom Clancy?

Clancy was a true unknown when he wrote Hunt for Red October -- an insurance agent who daydreamed of becoming a novelist.  The New York Times tells the back story here.  Prior to Red October, Clancy had published no fiction, but he had published a non-fiction article on the MX missile in the Naval Institute's Proceedings magazine.  So when he completed Red October he offered the novel to the Naval Institute; its headquarters were, after all, just a few miles away from his home near Annapolis.

The Naval Institute had published a few previous novels on naval themes and offered Clancy its standard contract, which included an assignment of the copyright to the publisher -- not uncommon for academic books at the time, but rare for novels.  Clancy happily signed the agreement and received a $5,000 advance.  Red October surprised both author and publisher when it turned out to be a colossal bestseller, selling many millions of copies (after Ronald Reagan praised it as "the perfect yarn").

For his second book, Clancy jumped ship and signed with a big New York publisher.  But the earlier copyright assignment to the Naval Institute almost torpedoed the new book.  Why?  Because the copyright assignment arguably carried with it the rights to the characters in Red October.  The Naval Institute commenced an arbitration claiming that, as the Times explained, the Naval Institute's copyright ownership in Red October gave it "a continuing interest in the Jack Ryan character, and it should therefore receive a percentage of the profits from Patriot Games and The Cardinal of the Kremlin and from any films or miniseries made of them."

The Red October arbitration was settled on undisclosed terms.  But the point is that fully drawn literary characters are generally subject to copyright protection, and the copyright owner will often be able to prevent others from using the character in other works without permission.  But the legal principles are by no means simple.

There are two separate but related questions here.  First:  Is a particular character protected by copyright?  Second:  Is the particular use made by someone other than the copyright owner infringing?

Here is what famed judge Learned Hand said 80 years ago in Nichols v. Universal Pictures Corp. about distinguishing between literary characters that are and are not protected by copyright:

If Twelfth Night were copyrighted, it is quite possible that a second comer might so closely imitate Sir Toby Belch or Malvolio as to infringe, but it would not be enough that for one of his characters he cast a riotous knight who kept wassail to the discomfort of the household, or a vain and foppish steward who became amorous of his mistress. These would be no more than Shakespeare’s ‘ideas’ in the play, as little capable of monopoly as Einstein’s Doctrine of Relativity, or Darwin’s theory of the Origin of Species. It follows that the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.

Judge Hand's analysis still holds true today.  As copyright guru Paul Goldstein puts it:

Fully realized characters in literature are little different from fully defined personalities in daily life, and it is no surprise that the test of protectibility that courts apply to literary characters is closely akin to the criterion that individuals apply in daily life to determine whether they in truth know someone. A literary character can be said to have a distinctive personality, and thus to be protectible, when it has been delineated to the point at which its behavior is relatively predictable so that, when placed in a new plot situation, it will react in ways that are at once distinctive and unsurprising.

Every reader of Catcher in the Rye comes away with the feeling that she knows Holden Caulfield, and so it was unsurprising to many copyright lawyers when, a little over a year ago, a court enjoined publication an unauthorized sequel by Fredrick Colting that told the story of a 76-year-old Holden Caulfield.  Here is the appeals court decision in that procedurally complicated case, which ended in a settlement prohibiting further publication in the United States and Canada.  Holden Caulfield is, in Goldstein's phrase, "fully delineated," and like other fully delineated characters (e.g., James Bond, as the court ruled in this lawsuit) he is surely protected by copyright, while, by contrast, sketchily defined, stock characters may not be (as the court found in this case).  (See also this account of a 1998 lawsuit to block publication of Lo's Diary "a distaff version of Nabokov's Lolita.")

But the fact that a character is copyright protected does not necessarily mean that every use of his/her fictional persona is an infringement.  A second work that invokes a copyright-protected character must copy some significant amount of expression in order to be an infringement.  The mere mention of the name of a copyrighted character ought not to be a copyright infringement because names, standing alone, are not copyrightable. (But see the discussion of trademark and unfair competition law below.)  A copyright infringement occurs only when a quantum of protectible expression has been copied, and the copying is not excused by the doctrine of fair use.  (Note that this post deals primarily with openly acknowledged use of another writer's character, not the situation where an author merely borrows certain traits or characteristics from a character.)

With this principle in mind, it would seem to follow that a fleeting appearance of another writer's fictional character as a dinner guest in my novel should not qualify as a copyright infringement.  However, as soon as I start to make Jack Ryan or Don Draper talk like, act like, or look like Jack Ryan or Don Draper in my novel I may be treading on thinner ice.  And if I make Jack Ryan or Don Draper an important character in my book, I'm begging for trouble.

There are several other important considerations here.  First, there are some copyright owners who, regardless of viability of their claims, will not hesitate to sue me at the drop of a hat if I use their characters in any way without obtaining permission (which they will never give me).  There is, in other words, a practical risk in inviting other writers' characters to my fictional dinner party, even if those characters keep their mouths shut and do nothing.  Frankly, it may not be worth it to me to take any risk of provoking a lawsuit arising from my imaginary soiree, even if I have the better part of the argument on copyright.  It's always safer to invite some nameless characters of my own creation.

(And Elizabeth Bennett can still attend the dinner, since she has been in the public domain for a long, long time.  Seth Grahame Smith, author of Pride and Prejudice and Zombies, is surely thankful for that.)

Second, the owner of the rights in a famous fictional character will also likely seek to invoke other legal theories -- particularly trademark and unfair competition laws -- when trying to protect her characters from my unauthorized use.  If the name of a character has acquired secondary meaning -- i.e., if the name is sufficiently well known that readers associate it exclusively with a particular author's work -- then the owner may be able to claim that my unauthorized use of the name creates confusion among readers, who may mistakenly conclude that my use of the name is authorized, approved, or licensed by the owner.  Confusion as to source, authorization, or  endorsement is the essence of an unfair competition claim. There might be ways to get around the trademark infringement/unfair competition argument, particularly with the use of prominent disclaimers that make very clear that Matthew Weiner has not authorized me to mention Don Draper.  But, still, the unfair competition argument is a complicating factor when referencing the characters of others.

Concern about characters as trademarks may -- or may not -- have figured into some of the choices made in The Wind Done Gone, by Alice Randall.  Randall's novel was, of course, a reinterpretation of the characters and events in Gone with the Wind.  Scarlet O'Hara appears in the novel, but she is referred to only as "Other."  And Rhett Butler is called "R."  Place names, such as Tara, were also altered.  That said, Scarlett and Rhett are "fully delineated" characters whose fictional lives are continually referenced (albeit not by their full names) in Randall's novel.  Small wonder then that the owner of the copyright in GWTW sued Randall's publisher, Houghton Mifflin.  As you can see from the complaint, the plaintiff alleged both copyright infringement and unfair competition, claiming, among other things, that the characters were both copyright-protected and had acquired secondary meaning.  It was a hard-fought case, with an inconclusive ending.  The trial court found that The Wind Done Gone was likely a violation of copyright and issued a preliminary injunction.  But the appeals court, in this decision, found on First Amendment grounds that it was improper to preliminarily enjoin publication of TWDG in part because Randall's work could qualify as a "parody" of GWTW.  But the appeals court did not rule out the possibility that the publisher of TWDG could ultimately be liable to the copyright owner for money damages.  The case settled before there was any final decision on a host of interesting legal issues.

These days, the unauthorized use of characters occurs all of the time in the context of fan fiction, which typically involves inventing new stories using familiar characters from literature, comic books, movies, or television programs.  An entire subculture has built up around fan fiction, and recently FanFiction.Net was the 747th most trafficked website in the United States.  Although each work must be judged on its own, suffice it to say that, if the issue ever reached a court, many works of fan fiction would be deemed derivative works that infringe upon the characters and stories on which they are based.  Chilling Effects has a great Q&A on the legal issues relating to fan fiction.  And the Wikipeida entry on the legality of fan fiction also makes for interesting reading.  Georgetown Law School professor Rebecca Tushnet wrote an excellent law review article on the subject.  And here is a list of other law review pieces discussing the legal issues.

Fan fiction writers have two things going for them.  First, as discussed in some of the references above, many (but by no means all) copyright owners have turned a blind eye to infringing fan fiction, on the theory that they do not want to alienate some of their most enthusiastic followers. Second, fan fiction writers rarely seek to profit from their work, which is helpful in arguing the defense of fair use, but by no means provides immunity from an infringement claim.  In short, writers of fan fiction, who publish their work on the web or elsewhere, should be aware that they are taking some degree of legal risk, unless, like Pride and Prejudice and Vampires, their works are based upon public domain sources.

So can I have Don Draper make a cameo appearance in my novel?  As you can see, the answer is a thoroughly equivocal "it depends."  A writer contemplating using the characters of another writer would well-advised to seek out the counsel of an experienced intellectual property lawyer.  (See this prior post on free and low-cost resources.)  If you're publishing with an established house, you should discuss your particular use of other writers' characters with your editor and the in-house attorney.

There are several helpful discussions on the web concerning copyright in fictional characters, including this one by Denver lawyer Lloyd Rich, this one by California lawyer Ivan Hoffman, and this by Phoenix lawyer Jasmina Zecevic Richter.

Does the DNA in a Bacterium Infringe the Copyright in James Joyce's "Portrait of the Artist as a Young Man"?

That wonderfully oddball question was posed to me yesterday by author Mike Mullin.  (See his entertaining tweets here.)

I admit that initially I didn't have the foggiest idea what Mike was talking about.  But when I read the link in his tweet it all became clear.

It seems that, in May 2010, the American biologist Craig Venter synthesized the genome of a microbe and implanted a snippet of its DNA into a DNA-free cell of another species.  As Carl Zimmer exclaimed in awe in a blog post on Discover magazine's website:

And that…that thing…can grow and divide. It’s hard to say whether this is “life from scratch,” because the boundary between such a thing and ordinary life (and non-life) is actually blurry . . . 

Here, from The Guardian, is a more detailed discussion of the extraordinary and controversial science -- arguably the first synthetic life form. And here is Venter himself talking about the breakthrough.  But for our purposes, the funky thing is that, as Zimmer reported in a later post, Ventner's synthetic cell:

carries a line from James Joyce, inscribed in its DNA: “To live, to err, to fall, to triumph, to recreate life out of life.” . . . The scientists who produced the new synthetic cell copied the genome of a microbe, letter for letter, and then inserted the synthetic version into a host cell. To determine that their experiment worked, they needed a way to tell the genomes of their synthetic cells from the natural genomes that were their model. So they inserted “watermarks” into the artificial genome. These sequences of DNA (which spelled out the work of Joyce and others through the genetic code) sit in non-coding regions of the microbe’s DNA.

(Emphasis added.) What happened next, sounds like a satire of the James Joyce Estate's legendarily overzealous copyright policing.  As David Ewalt reported in his blog on Forbes.com, at a conference in Texas just last week:

Venter explained his team received a cease and desist letter from Joyce’s estate, saying that he’d used the Irish writer’s work without permission. ”We thought it fell under fair use,” said Venter.

In other words, the Joyce Estate evidently contended that a sequence of DNA in a bacterium infringed the copyright in Portrait of the Artist.  In his tweet, Mike Mullin asked -- doubtless tongue in cheek -- for an opinion on the viability of the Estate's copyright claim.  Here, Mike, is how the analysis might go, if one were to take this claim at all seriously:

The first question is whether Portrait of the Artist is copyright-protected at all.  Joyce's novel was first published in 1916.  It is therefore in the public domain in the United States, as are all works first published in 1922 or before.  (See this earlier post on copyright duration.)  Thus, as long as the literary bacterium was bioengineered in America and not distributed abroad, it would not be an infringing microbe.  Indeed, you can read the entirety of the book on the Project Gutenberg site. (It is, to say the least, quite wonderful.)  But keep in mind that the United Kingdom and the European Union calculate the duration of copyright in older works differently.  Copyright there (at least for works first published during an author's lifetime) endures for seventy years after the death of the author.  Since Joyce died in 1941, Portrait of the Artist is copyright-protected in those jurisdictions until January 1, 2012.  So if the creation and replication of the microbe took place in the UK in 2010, the Estate at least has a copyrighted work on which to base its claim.

By the way, this webpage maintained by Ohio State University and The International James Joyce Foundation tells you everything you could possibly want to know about the duration of Joyce's copyrights in various countries throughout the world.  Among the contributors to page are Robert Spoo and Carol Loeb Shloss.  I will come back to Spoo and Shloss in a minute.

I do not know where Venter's bacterium was created, but he is an American and his Institute is based in Maryland and California.  So odds are the copying occurred in a jurisdiction where Portrait of the Artist is in the public domain.  Don't sweat this, Dr. Venter.

But what if the new life form had been born in London?  There would still be a long line of hoops that the Estate would have to jump through to prove copyright infringement.  We will take it as a given that the microbe does in some sense "copy" a small portion of Joyce's novel, even though the copying cannot be seen by looking at the microbe under a microscope, but only in the print-out produced by the laboratory equipment that analyzes its genetic sequencing.  I am no authority on "fair dealing" -- the British equivalent of "fair use" (I leave any UK analysis to Emily Goodhand @CopyrightGirl) -- but under U.S. law, any claim of copyright infringement would, of course, be patently ridiculous.  The 14-word phrase from Joyce is so short that it would likely qualify as de mimimis copying -- i.e., too insignificant even to bother with applying the fair use analysis.  If the fair use factors under Section 107 of the Copyright Act were examined, Venter should surely win on at least three of the four.  In particular, a court would almost certainly find that Venter's use of Joyce's words was highly "transformative," which strongly favors a finding of fair use.  The "amount and substantiality of the portion used [by Venter] in relation to the copyrighted work" is trivial, to say the least. The effect of Venter's use on the market for Portrait of the Artist is non-existent.  Point, game, match -- Venter.

By the way, from what I read, as the bacteria replicate, the Joyce "quote" is gradually becoming more and more garbled, as mutation alters the gene sequencing.

But there is a serious point lurking here.  This is by no means the first time that the Joyce Estate has aggressively rattled its copyright sabres.  See this long and  fascinating New Yorker article.  And see  this summary by Kim Dian Gainer, which describes the "forced the excision of material from Brenda Maddox’s biography of Nora Joyce," the blocking of a "performance based upon a short story by Joyce that, ironically, was itself based upon a folk tale,"  the blocking of "live readings of Ulysses on the internet," and, in 2004, the threat of legal action to "derail[] exhibits and readings intended to be a part of the ReJoyce Dublin 2004 festival."

Most famously, the Estate objected to Carol Shloss's plans to quote from certain letters and other materials in her biography of Joyce's daughter, Lucia.  In response, Shloss filed a landmark declaratory judgment and "copyright misuse" lawsuit, in which she argued, among other things, that the Estate misused its copyrights in an effort to influence scholarly treatment of Joyce's works and life.  Robert Spoo was one of the attorneys who represented her.  (I told you I would return to Shloss and Spoo.) Ultimately, Shloss obtained a highly favorable settlement, and the Estate ended up paying $240,000 in attorneys' fees to Shloss and her counsel.

Based upon the letter accusing Venter of creating an infringing bacterium, the Estate does not appear to have been chastened by the outcome of the Shloss case.

Postscript: Following up on the Joyce/Venter controversy, New Yorker blogger Jeannie Venasco located several other accounts of literary quotations that have been encoded into DNA (evidently without attracting cease and desist letters).  She summarizes her research in this amusing post.

Titles and the Law: Can I Call My Novel "The Great Gatsby"?

I just finished reading Nemesis by Philip Roth.  When I was originally looking to buy a copy online, I was struck by the fact that there are roughly a dozen earlier novels by the same title that are still in print -- including works by such well-known authors as Agatha Christie and Isaac Asimov.  A legal problem for Roth?  Nah.

Let's take a look at three legal theories that authors and publishers have sometimes asserted (with varying degrees of success) in lawsuits to protect book titles.

1.  Copyright Law.  U.S. courts have unanimously held that titles are not copyrightable.  Here is one such case.  Indeed, the Copyright Office will not register a claim of copyright in a title, as it explains in Circular 34:

To be protected by copyright, a work must contain a certain minimum amount of authorship in the form of original literary, musical, pictorial, or graphic expression. Names, titles, and other short phrases do not meet these requirements.

Given the rationale for non-protectability, my wonderful copyright professor in law school, the late John Kernochan, once posed the question whether the inventive 26-word title of Peter Weiss's play The Persecution and Assassination of Jean-Paul Marat as Performed by the Inmates of the Asylum of Charenton Under the Direction of the Marquis de Sade aka Marat/Sade would be copyright-protected. After all, the title is as long as some poems.  While it would certainly be worth a try to argue that a lengthy and highly expressive title is copyrightable, suffice it to say, the courts and Copyright Office have never, to my knowledge, recognized an exception of the sort that Professor Kernochan hypothesized.  (But see this case finding that the famous short phrase of movie dialogue "E.T. phone home" was likely protected by copyright.)

2. Trademark Law. Here is where it starts to get complicated. The Patent and Trademark Office ("PTO") will not register the title of a stand-alone literary work (including a fiction or non-fiction book, song, movie, or video game). But the PTO will register as a trademark a designation for a series of works. Think of [Insert here almost any subject you can think of] For Dummies. "For Dummies" is a federally registered trademark for a series of "non-fiction books, guides, manuals, and catalogs on a wide variety of topics." Similarly, "Harry Potter" is a federally registered trademark for a series of novels for young people, among many other items.  But, if there had been only one Harry Potter novel and it had not become the basis for a series of books and movies and countless merchandising opportunities, trademark registration would not have been an option.

If you do manage to obtain a federally registered trademark for your series of books, you might have a plausible basis for a trademark infringement claim arising out of the publication of a book with a confusingly similar title, particularly if it's on a confusingly similar subject. Trademark infringement cases involving a registered mark for a series of books are not especially common, but they do come up from time to time. The Fishing Hot Spots case is one example.  A federal trademark registration gives you a significant advantage in any litigation over a title because it carries with it a legal presumption of exclusive nationwide rights to use the name in connection with the goods for which it's registered.  The defendant might still be able to prove that his use creates no likelihood of confusion, but it will be an uphill battle.

3.  Unfair Competition or Passing Off.  But it gets even more complicated.  Although the PTO won't register a trademark for a stand-alone literary work, the federal courts will nonetheless sometimes invoke the Lanham Act to protect unregistered titles from confusingly similar uses by others.  However, the courts will only extend protection to titles that have achieved "secondary meaning."  Here's how the Second Circuit Court of Appeals explained "secondary meaning" in Rogers v. Grimaldi: 

The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product. Thus, it is well established that where the title of a movie or a book has acquired secondary meaning — that is, where the title is sufficiently well known that consumers associate it with a particular author's work — the holder of the rights to that title may prevent the use of the same or confusingly similar titles by other authors . . . .  Indeed, it would be ironic if, in the name of the First Amendment, courts did not recognize the right of authors to protect titles of their creative work against infringement by other authors.

Similarly, most states have laws forbidding "passing off," which is a form of unfair competition.  While the laws vary from state to state, here, again, in order to prevail, a plaintiff-author will likely have to prove that her title has acquired "secondary meaning" and/or that the defendant adopted his confusingly similar title with the intention of deceiving book buyers into believing that his book was somehow connected with plaintiff's book.

So, to simplify quite a lot, you may be able to use the federal or state unfair competition laws to protect against the publication of a subsequent book by another author with a title that is confusingly similar to your title.  But first you must be able to prove to a court's satisfaction that a substantial portion of the book-buying public would assume that any book by that title must have been written by you or must have been published by your publisher.  That's actually a hard row to hoe.  Only occasionally will the title of a single work in a single medium be deemed to have achieved secondary meaning.  On the other hand, if the author has published a series of books using the same title, it is more likely to be found to have achieved secondary meaning, even if it has not been registered as a trademark, as in this case concerning the protectability of William Bennett's title The Book of Virtues.

Let's consider how these principles might play out in various situations.

Given that Nemesis is a fairly obvious title for a work evoking a mood of menace or suspense, given that by the time Roth published his novel there were already several other books called Nemesis in print, and given that readers are accustomed to distinguishing among novels by their authors as well as their titles, it is virtually unthinkable that the Asimov estate or the Christie estate could prove that the public associated the title Nemesis exclusively with Isaac Asimov, Agatha Christie, or anyone else.  And, for a host of reasons, a reader looking to buy Christie's Nemesis is unlikely to end up buying Roth's book by mistake.  So, Roth doesn't have to lose any sleep about the unoriginality of his title.  Similarly, if I were to call my novel Nemesis, Roth probably could not successfully pursue a claim against me.

But what if I were to entitle my novel Swamplandia?  Karen Russell recently released a popular and well-regarded novel by that distinctive name. There does not appear to be a single other book listed on Amazon, in-print or out-of-print, called Swamplandia.  Under the circumstances, a court might be tempted to conclude that the only reason I adopted the title Swamplandia was to confuse book buyers into mistakenly buying my book when they really meant to buy Russell's. I fear that Karen Russell might have a plausible claim against me for unfair competition -- at least if I were to publish a book called Swamplandia right now. But if, like most books, Swamplandia eventually fades from the consciousness of the book-buying public, it might lose its "secondary meaning," and another author could then safely adopt the same title -- or one that is very similar. That's effectively what the court decided in the venerable case of International Film Service v. Associated Producers, 273 Fed. 585, 587 (2d Cir. 1921) (involving the title "Broken Doll").

So, given the passage of time since F. Scott Fitzgerald published his little novel, could I call my novel The Great Gatsby?  As a matter of copyright law, no problem.  And "The Great Gatsby" does not appear to be a federally registered trademark for books or movies (although, curiously, there is a "Great Gatsby's" registration for auction services).  As a result, there probably would be no claim for infringement of a registered trademark.  Nevertheless, given the distinctiveness of the title, the enduring fame of Fitzgerald's novel, the fact that the work has been adapted for the movies, and a host of other factors, I would be cruising for a lawsuit if I chose The Great Gatsby as the title for my novel unless (and maybe even if) the cover was filled with wall-to-wall disclaimers.

That said, there are several other books currently in print by authors other than Fitzgerald that do have "Great Gatsby" in the title -- namely, non-fiction books of literary criticism, such as this one.  If I were using "The Great Gatsby" in my title to refer to Fitzgerald's book, it might qualify as nominative fair use and therefore not be an infringement. In other words, if I make it clear enough that my book is about The Great Gatsby, but that it is not Fitzgerald's book or some kind of sequel, then my "nominative fair use" defense will likely succeed.  (It would probably help to have a subtitle or prominent disclaimer on the cover that further clarifies this is not The Great Gatsby, but a book about The Great Gatsby.)

The same general legal principles that apply to recycling of book titles hold true as well for recycling song titles and movie titles.  However, as described in this piece in Slate, the Motion Picture Academy of America has a system designed to minimize duplication of movie titles, including a procedure for arbitrating title disputes.  Still, "video doppelgangers" are common, as discussed in this Entertainment Weekly article.  As to the music industry, Kate Kiefer of Paste magazine posted this blog about duplicate song titles.  And this site maintains a list of duplicate song titles, with some 3,092 entries.  The "most recycled song title"?:  "Home."

In short, using a title that has previously been used on another book is, more often than not, perfectly lawful.  In a relatively rare instance where your title is likely to create confusion with a previously published book, your publisher will likely urge you to adopt a different, safer title -- like Nemesis.

What Can You Do If Your Co-Author Denies You The Credit You Deserve?

A friend of mine, whom I will call Julia, recently co-wrote an article with one of her supervisors at work.  Julia did the lion's share of the research and writing and was told that she would be given a co-author credit when the article appeared in print.  Indeed, a preliminary version of the article (blessed by her supervisor) specifically listed Julia as co-author.  However, between the time she wrote the article and when it was scheduled to appear, she took a job with a competitor.  Lo and behold, when the article was ultimately published, Julia had suddenly become, in Orwell's phrase, an unperson.  Not only was her name omitted from the by-line, but her co-author gave her no credit at all, not even a fleeting mention in a footnote.  Slimy.  

What could she do?  What should she do?  

This is, of course, a woefully common fact pattern.  Credit is, of course, a key consideration in all types of writing, ranging from million-dollar screenplays to scholarly papers where the writer has no expectation of any payment. Regrettably, as is so often the case, there may be a wide disparity between the legal remedies theoretically available, on the one hand, and the practical cost-effective options, on the other.

As to what Julia could do, here are the principal legal remedies that credit-robbed writers have sometimes successfully pursued:

1.  Copyright.  The most direct attack would ordinarily be for Julia to file a lawsuit seeking a declaratory judgment that she is the joint author and co-owner of the copyright and seeking an accounting of any revenues (to which, as co-owner, she would be presumptively entitled to half).

However, in Julia's case, the article was written within the scope of her duties to the company -- i.e., at the direction of her boss, on company time, using company computers, accessing subscription databases, such as Lexis-Nexis, paid for by the company, for the purpose of demonstrating the company's expertise in the subject area.  For these reasons and others, her contribution to the work probably constitutes "work made for hire," as defined in Section 101 of the Copyright Act, belonging to the company.  Indeed, her supervisor's contribution to the article is also probably "work made for hire."  As a result, the company -- rather than either of them individually -- probably owns the copyright.  As a result, my friend could not seek a declaratory judgment for joint ownership of copyright -- much less pursue a claim for copyright infringement.  Indeed, one co-owner of a copyright owner cannot ordinarily sue the other for infringement.

That said, if you are a freelancer or an independent contractor, you, unlike Julia, might have a basis for a declaratory judgment action.  Here, for example, is the Court of Appeals decision in an epic battle by songwriter Shirley Goodman to obtain a declaratory judgment that she was the joint owner of the copyright in the rock and roll classic, "Let the Good Times Roll".

2. False Designation of Origin Under the Lanham Act. Until 2003, my friend could have brought an action under the federal Lanham Act, which prohibits various forms of unfair competition.  For many years, the federal courts held that a contributor to a creative project could sue, under the Lanham Act, for false designation of origin if she was not given proper credit -- or any credit -- for her work.  For example, in Lamothe v. Atlantic Recording Corporation, two members of the band Ratt sued other members of the band, alleging that they had wrongfully been denied credit as co-writers of the band's songs.  An appeals court held that one of the purposes of the Lanham Act is to ensure that "the producer of a good or service receives appropriate recognition and that the consuming public receives full information about the origin of the good."  The Lanham Act even offered the possibility of triple damages if the defendant's conduct was egregious.  But then came the Supreme Court's decision in Dastar v. Twentieth Century Fox Film Corp.  Dastar is a complicated case, which I won't try to summarize here, but the effect of the decision was to slam the door on the use of the Lanham Act in cases of alleged false attribution of creative credit or omission of credit.

3.  Breach of Contract.  After Dastar, Julia's last best hope for a successful lawsuit would probably be a claim for breach of contract.  Not all contracts have to be in the form of signed writings in order to be enforceable.  In many instances, an oral agreement on authorship credit could be enforceable.  Or a contract might be inferred from the circumstances (e.g., the draft with Julia's name on it).  [Don't get me wrong: it's always better from a legal perspective to have a written, signed contract, and some agreements, like "work made for hire" agreements and copyright assignments must be in writing.]  Basically, Julia's claim would boil down to:  you promised to give me credit, you broke your promise, and I was injured as a result.

There are a few other possible legal theories: unjust enrichment, state deceptive trade practices laws, state artist's rights statutes, etc.  But none is especially likely to be more successful than a straight-out breach of contract claim.

But let's get real.  Julia's boss wasn't paid for the article.  So even if she were to win a breach of contract case, she probably would not receive more than token damages.  It's too late for a court to order that her name be included in the by-line of the printed article.  Contract damages on the theory of injury to her professional reputation would be extremely speculative and, as a result, unavailable.  With no real prospect for recovering interesting money damages, Julia could never get a lawyer to take her case on contingency.  If she has to pay a good IP lawyer his hourly rate, she would soon find herself writing four figure checks.  Maybe one of volunteer lawyers for the arts groups discussed in this post would help, but Julia may actually have too large an income to qualify for their services.

So what should Julia do?

The right strategy in these cases varies wildly depending on the dynamics of the writer's situation.  These steps might make sense for Julia, but they might make no sense for you.

1.  Figure out in advance what your objectives are.  In Julia's case, her principal goal in writing the piece was to obtain professional recognition.  It's too late now to get credit in the printed article.  But it might still be feasible to ask that a correction be published in conjunction with the online version of the article, acknowledging her contribution.  This would enable her to point to the article as her own, include it on her resume, etc., so it is a goal that may be worth pursuing.  Your goal, by contrast, may be reasonable financial compensation, another project to work on, an apology, a email you can point to acknowledging your role as co-author, shaming of your co-author, or sweet revenge -- each of which may require a different strategy.

2.  Gather your evidence. Pull together and preserve all emails, drafts, letters, contracts, invoices, etc. relating to the project.  Review whether there is any objective, documentary evidence of the promise of credit.  Or does it come down to your word against your co-author's?

3.  Decide whether you dare to complain. There are times when it's frankly not worth it to fight over credit -- an undistinguished article in an undistinguished publication, no money at stake, the risk of offending someone whose goodwill you depend upon.   For example, if Julia were still working at her old company, making an issue over the denial of credit might have cost her a raise, a promotion, or even her job.  Those considerations might have had a bearing on whether and how she pursued her grievance. But, because she is no longer working under her co-author, she has little to lose in fighting for the credit she deserves.  I am not suggesting that writers should hesitate to complain when they've been screwed; all I am saying is that it's important to maintain a sense of proportion about any dispute.

4.  Decide whom to complain to. Obviously, the first person you will complain to will be your co-author.  But are you willing and able to complain to others?  Keep in mind that if you announce to a third party that your co-author robbed you of proper credit you may run a risk that your co-author might claim you have libeled him.  (If I only tell you that "you're a plagiarist," it isn't libel; but if I make the same statement to your boss and can't back it up, it could be.  See this interesting article on libel claims arising from plagiarism allegations.) If you are planning on complaining to your co-author's boss or the publication's editor or making your grievance known to the public at large (e.g., on your blog or a gripe site), it may be wise to consult a lawyer first.

5.  Decide how to complain. A face-to-face meeting is often the most effective means of resolving any dispute.  Emails and letters have the virtue of giving you time to collect your thoughts and providing a record of what has been said.  Your  complaint should generally make clear (a) your basis for claiming that you were promised a certain form of credit; (b) the way in which the promise was breached; (c) what you want your co-author to do by way of remedy; and (d) the deadline for implementing the remedy.  These are the classic elements of a lawyer's letter.  If you threaten litigation, it should not be an idle threat.

6.  Decide early on how far you are willing to go.  If litigation is a genuine consideration, see that lawyer sooner rather than later. Consider whether there is anything you would be willing to give in return for the remedy you are seeking.

7.  Keep a record of what you've done to pursue your complaint.  Memorializing your conversations and keeping copies of your emails and letters of complaint may be important both offensively and defensively.

8.  Be persistent but never harass.  

9. Mediation? Is there anyone that both you and your co-author would trust to help facilitate a resolution?
10.  Small claims court?  Julie could pursue a claim for breach of contract in small claims court.  In most jurisdictions, individuals need not appear through a lawyer, although corporations must.  You can't recover much money in small claims court; usually the court's jurisdiction is limited to claims of a few thousand dollars. In Julia's case, however, the problem is that she really doesn't have any financial damages, and, even in small claims court, they don't award you money just for being right.

In some contexts, there may be non-judicial means of seeking redress.  In the film industry, the Writers Guild of America and the Directors Guild of America have rules on properly crediting writers and mechanisms for enforcing them.  Universities often have ethics committees that will review disputes over proper crediting of co-authors.  Some scholarly and professional organizations will also investigate accusations of failure to credit and the related offense of plagiarism.

So what should Julia do?  If she had a claim of co-authorship of a hit Broadway musical or a Michael Jackson song, full-fledged litigation might be worth considering. But, with no pot of gold at the end of the rainbow, the most cost-effective result she could reasonably hope for is to argue, bluster, or cajole her co-authors into giving her credit in the online version of the article.  And an apology.

The next time, she will know to document her agreement on co-author credit by an exchange of emails.  On bigger projects, as discussed in this prior post, she should consider entering into a simple collaboration agreement.

[Hat tip to DJF for editorial suggestions.]