Trademark Rights

Q.  The publishing agreement for my first novel requires I assign my rights “in perpetuity in any series titles including any trademark, service mark or trade dress rights.” What is this all about? Should I agree?

A.  It’s all about IP – intellectual property. If this agreement is for a single novel, then no, you shouldn’t agree.  A trademark is a word, phrase, symbol or design, that identifies and distinguishes the source of a product – in your case, a novel.  (A service mark is the same as a trademark, except that it identifies the source of a service rather than a product.)  “Trade dress” is a type of trademark referring to the overall appearance of a product and/or its marketing – for example the distinctive shape of the classic Coca-Cola bottle.

As I described in a recent column, book and movie titles are not protected by copyright (that is why you see many that are the same), but a book or movie title can be a trademark if it is used in connection with a series – essentially, the title becomes a brand, such as Star Wars, or Harry Potter, or many science fiction and mystery series.  The owner of the trademark typically is the publisher or entertainment studio.  Unlike series titles, however, the title of a single novel is not protectable under U.S. trademark law because the work stands alone.

Your publisher is asking you to assign future trademark rights in your novel’s title in case you write additional novels in series with this one.  This would be appropriate – although negotiable – if the publisher offered you a multi-book contract for the series.  It is not appropriate, however, for a stand-alone book, especially if, as in some agreements, trademark rights do not revert to the author when the book goes out of print.

Let’s look at the possible scenarios.  Your novel may not be successful, and thus it is unlikely you will write any more in the same vein.  In that case, the proposed assignment of rights does you no harm.  But if your novel is successful and you decide to make it a series, you will have to sign again with this publisher because a new publisher will not want a series whose trademark is owned by another publishing house.  (Or you might have to ask the publisher to release its rights for a fee.)

But wait – there’s more.  Series novels sell very well in e-books.  Again, suppose your novel is successful, and then in the future (perhaps after you have written other books) you decide to self-publish a series based on the first novel, using the title of the first book.  You decide to register the trademark – but you can’t because you assigned your rights to this publisher.  In fact, this publisher could even demand payment from you for using the trademark – or file a trademark registration in its name based on your original assignment of rights!

If you object to the assignment,  the publisher may counter by saying it must be able to use the title of the book in all events.  That can easily be satisfied by simply including the following: “The Publisher has the right to use the title in connection with all rights granted by the Author in this Agreement.”  This will give the publisher the right to continue to use the title in new editions even if you or your new publisher trademark it as part of a series.

© 2018 Daniel Steven