By "merchandising rights" I mean those rights that attend the ownership of the underlying copyright in the book but which involve the sale or license of rights to do marketing and promotional material in media other than the printed medium of the book. And while soft cover or book club licensing or the like may fall loosely within this term, for the purposes of this article I intend to speak to non-book exploitation of the material. These are part of what are considered "ancillary rights" and are, in copyright terms, the right to create a derivative work based upon the original copyright in the book. The United States Copyright law states:
Subject to sections 107 through 120, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(2) to prepare derivative works based upon the copyrighted work;And a "derivative work" is defined as follows:
A ''derivative work'' is a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a ''derivative work''.
Additionally, these rights must address the entire scope of what may be considered copyrightable material in the underlying work including rights to characters, titles, art, and such. The specific areas in which these rights may be exploited should also be covered, areas such as films, television, multimedia such as CD or via the Internet and all other potential marketing platforms and media.
The issue that arises here is the appropriate acquisition by the publisher of the rights to the art from the artist. Whether acquired via a work made for hire agreement or an assignment of all rights, this is key. If the artist is a bona fide employee of the publisher and does the work in the course and scope of the artist's employment for that publisher, the publisher will likely own the artwork under the work made for hire rules. But independent contractor graphic artists often want to retain rights to their art, licensing to the publisher only those rights necessary for use as a book cover. Thus, the issue is squarely faced and the party retaining merchandising rights is in a significantly better position.
If these rights cannot be obtained from the artist, then the negotiation must include issues such as holdbacks, approval rights, participation interests in order that the exploitation of these rights does not interfere with and indeed enhances the book.
Yet another concern may be the allocation of the right of approval of the particular merchandising item. Neither side is likely to want to license anything that might be considered as lessening the value of the book but such a standard is at best subjective. Someone has to be given the right of final approval.
© 1996 Ivan Hoffman
This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws.
No portion of this article may be copied, retransmitted,
reposted, duplicated or otherwise used without the express written approval
of the author.
"Protection of Book Titles"