Whether you are a publisher, author, web site designer, site owner or otherwise, you may find yourself in the position of having to request permission to use protected materials belonging to another party. "Protected materials" means materials protected by the copyright, trademark, unfair competition or other laws or judicial decisions of the United States or any individual state. This term, as I use it, can include text, graphics, logos, photographs or other such materials as well as "materials" such as personal rights against defamation, invasion of privacy and publicity. Keep in mind that there are multi-layers of protection and while the federal laws may preempt state laws in the same areas, there may be other laws applicable in a given state that may exist to protect rights independent of federal law. All of these are what I refer to as "protected materials."
The Issues to be Faced
Whether you are requesting rights to use text, graphics or the like, or are seeking permission to use personal rights such as names, likenesses, biographical information, or a combination of these, in making such request, you must evaluate many issues in order to determine how to prepare and submit your request and the appropriate legal form it should take. You must be certain to seek *all rights* necessary for you to effectively exploit the work for which the permissions are being requested. This requires you to have vision enough to see your work in all of its manifestations, now and in the future. (Read "The Need For Vision")
Among the rights you want to seek are rights in all media, all languages, all editions, throughout the world, in perpetuity including the right to change, edit and adapt the protected materials. If you intend to use these protected materials on a web site, then you want to seek rights to use those materials in other media as well. [Note: since I am writing this article from the point of view of the user of the protected materials, clearly if you are the owner of those materials your goal would be to give away as little as possible.] (Read "Screen Shot Liability For Computer Book Authors")
You should include as well rights to all derivative works, which are works that are based upon the original work. This means that if you are publishing a book, you should have the right to turn the book into a CD-ROM or a movie, for instance. And, as I mentioned, if you are publishing a web site, you want to have the right to turn the site into print or other media as well. Today's web site can be tomorrow's feature length motion picture or a game etc. And you should seek rights to advertising and merchandising also. And if you are seeking personal rights such as the right to use a person's name and likeness, this must be included as well as a waiver from that person of all claims such as to defamation, invasion of privacy and rights of publicity.
Additionally, you must acquire the right to assign and transfer your rights to another party. If you intend to make deals of any sort, you must have this right.
There should of course be representations and warranties from the party making the grant that in fact they have the right to make that grant and hold you harmless in the event it turns out not to be so.
If you are a publisher, whether of books, a web site or otherwise, and you are obtaining a work written by a third party author or created by a web site designer, your agreement with that author or designer must clearly state that it is the author or designer's responsibility to obtain all required permissions. An important note: you must be certain that you, as the publisher, supply the permission form to be used so that you, as the publisher, as well as the author or designer, are protected. Keep in mind that a publisher who publishes an infringement is liable as an infringer as much as is the writer or designer who wrote or created the infringing materials. If you do not have such a permission form to provide your authors or designers, then you should contact me.
Clearly, all these provisions must be embodied in an appropriately drafted, written agreement and that agreement must be signed by the owner of the rights.
THE RESTRICTIVE LICENSE
Often the publisher or other requesting party is presented with a form submitted by the owner of the protected materials. As I mentioned above, that owner will want to grant far less rights than the publisher or other party may desire or need in order to fully exploit the work. The publisher or other party, upon being presented with such a form, should have it reviewed by an attorney since many of the restrictions contained within it may be subtle and the publisher or other party may not appreciate the full impact they may have upon the ability to make exploit and make money from the work.
Clearly one issue to be faced is that of money. Most often, unless a protected material is absolutely essential to the work, if an owner asks for money for the use it is often best to simply not use that protected material and find a substitution.
However, there are often other restrictions placed on the grant of protected materials, which other restrictions may be far more onerous. These restrictions are often time limitations, territorial limitations, language limitations, limitations on the edition for which the permission is granted, media limitations and other such restrictions. All of these limitations should be avoided and if the grant to use the protected materials comes with these "strings" attached, the publisher or other party should strongly consider avoiding using that protected material and find a substitute. These restrictions can be quite troublesome and materially interfere with the ability to exploit the work fully. (Read "Look Before You Sign: Restrictive Licenses")
As in all things, timing is everything. These permissions must be sought very early on in the writing or creation of the work so that if difficulties arise, the author, designer or other party can work around the need for some particular protected material. By the time the work is ready to go, all of these permissions must have long been obtained. Once a book or other work is published, the ability to obtain the rights necessary diminishes rapidly and the bargaining position of the party changes radically. If you are an infringer, you have much less power to make a deal that is in your best interest.
© 1999 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.
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