Legalities 12: How to Hire a Lawyer

Q. I am working on a visual merchandising textbook project with two other authors. We have sent the proposal and sample art to a publisher. The publisher has expressed interest and we have a conference call scheduled to discuss the next step. I created the original illustrations, graphics and logo for project. I’ve sent deposit to copyright office and did quick search of the logo trademark. All three of us will be contributing as authors.

Now we are looking to retain a lawyer. I’ve never hired a lawyer. What do I need to know? Ask? Do?

A. I think the most important thing in hiring a lawyer is to meet a couple different lawyers (or at least speak to them at some length on the phone) who have expertise in the applicable area of law (in your case, you’re looking for an intellectual property lawyer who practices in the fields of copyright, trademark and publishing). To find such lawyers, I recommend the referral panel at California Lawyers for the Arts. You can also ask friends or other graphic artists for referrals (if they have an attorney, would they recommend her?), or other attorneys you might know. Attorneys are similar to doctors — we practice in different distinct areas of law. Intellectual property law is especially peculiar, and you do need an attorney with that particular expertise. A tax lawyer, or a family law attorney, for example, cannot competently help you with these questions. However, if you know or are referred by a friend to an attorney who does not practice in this area of law, he or she may know other attorneys who do. The phone book lists lawyers in different practice areas. There are some online “referral” services as well, but most of these are sites where lawyers pay to be listed. They are not as reliable for finding good attorneys.

Most lawyers will give you a half hour or so free consultation (I do this through California Lawyers for the Arts and also for anyone who contacts me on their own or through GAG, like your email). Use the time to explain your situation and ask your questions (even if its only “what do I need to know in this situation?”). Also ask how much experience the lawyer has with clients in your same situation, and what the attorney’s fees will be. (Most lawyers would do this kind of work for an hourly fee, which is generally billed in 1/10th hour increments.)

The way the lawyer answers you will tell you two important things: first, it will give you a sense of how well the lawyer knows that area of the law. Even if you can’t be sure about that (because you often can’t tell if what they are saying is correct), you will get a sense of their competence from how comfortable they seem answering your questions. Also, if one lawyer says something different, or tells you more than the other, that will give you an insight into their relative competence. A wide discrepancy in fees is also a red flag. If a lawyer is charging much less than the average rate, she may not have sufficient experience to give you proper advice. If she is charging a much higher fee, you may want to look for someone with equivalent experience in a smaller firm, where rates are generally lower. (However, be prepared for realistic legal fees. For work of this kind, typical fees would be in the range of $300 to $400 per hour. First-time clients are often shocked at this, but remember that legal fees cover all of the work done by an attorney and his or her staff — usually two other people besides the attorney — and many other high overhead costs of providing legal services, such as library fees, legal database licenses, bar dues, leases, and last but not least, exorbitant insurance premiums.)

Second, you will get a sense of how well the lawyer can explain the law to you and how much the lawyer cares about ensuring that you understand what she is explaining. You should also get a sense of how comfortable the lawyer would be including you in the process — if she talks about ways in which you can contribute to the work, that is a good sign that the lawyer is also concerned about making the process as efficient and cost-effective for you as possible. You will also get a sense about the lawyer as a person — whether you feel comfortable talking with her, whether she has been careful to understand all the aspects of your situation, whether you have a gut feeling that you can trust her. I think this part is just as important in choosing a lawyer than her relative expertise — sometimes more important. For example, if a lawyer tells you she needs to check further on something before she can answer a particular question, that may show that she can be trusted to be honest with you. The law is complicated, and all competent lawyers know they often must review applicable statutes or case law to thoroughly evaluate a specific situation.

Based on your question, as an intellectual property attorney, I see legal issues that should be addressed in three general areas:

1 – Your relationship with your co-authors / copyright issues
Under copyright law, the three of you will probably be creating a single “joint work,” that is, the final textbook. You have created the artwork, and you and your two co-authors will be creating the text. As three co-authors of the textbook, you need to decide how you will share revenues, copyrights, attribution, etc. and you’ll need an agreement to memorialize those decisions. The copyright law has certain default answers to these questions, but usually they are not what the co-authors would want. If the co-authors have no other agreement, copyright law provides that each author has an undivided equal copyright in the joint work, and each has an independent right to exploit the work. A joint author’s only obligation would be to share her profits with the other two; she wouldn’t need their permission to give someone else rights in the work. Usually, this is not a good idea, especially in the publishing world. Most often, co-authors want an agreement that gives each author a vote in how the work will be exploited.

Alternatively, you and your co-authors may be able to treat your contributions to the textbook as separate works with separate copyrights. It depends on how intertwined your contributions are. The illustrations can probably stand alone as separate works. With respect to the text, if you each write separate sections, the respective sections can be your separate copyrighted works. On the other hand, if you all contribute to the writing, revising and editing of the same text, the text will be a joint work.

In your situation, it sounds like you may have filed for copyright registration of the artwork in your name alone. Your lawyer will want to check if your copyright application is consistent with how the three of you want to treat copyright ownership in the artwork. Your lawyer should want to review the submissions you’ve already made to the Copyright Office in any event, to ensure that they are otherwise in good order. Although it seems like a straightforward process to apply for copyright registration, there are some tricky areas and potential pitfalls that can delay or derail the registration. For example, copyright does not cover logos comprising stylized type or simple logo designs. Some more complex logo designs qualify as copyrightable artwork, but if you call it a “logo” on your copyright application, the Copyright Office is likely to issue an office action rejecting the application.

2 – Trademark issues
Your logo design raises different issues under trademark law. Trademarks are another form of intellectual property separate from copyrights. Copyright protects the creative content of your book, that is, the text and artwork, against unauthorized copying. Trademark law protects words and other symbols that consumers perceive as a symbol of the source of particular goods or services. In your case, the logo is a potential trademark for the textbook and other products or services on visual merchandising or similar subjects. While copyright owners can stop any unauthorized use of their content (except for certain circumstances which qualify as “fair use”), trademark owners can stop others from using a similar logo only if it is likely to cause confusion with respect to the source of their goods or services. (So for example, if an airline reproduced one of your illustrations in its in-flight magazine, that would be copyright infringement. But if the airline adopted a logo similar to yours for its corporate identity, there would be no trademark infringement because consumers would not associate airline travel with visual merchandising textbooks.)

A good trademark lawyer will tell you that you need to look at your logo design from two perspectives: defensively, that is, to ensure that the logo does not infringe other trademark rights, and affirmatively, that is, ownership of the logo and protecting the logo against infringement by others.

Defensively, you will need a more thorough trademark search by the lawyer, her professional searching staff, or an outside professional searching service. Quick searches by lay people are rarely thorough enough to rely upon. This is especially true for logo designs, which are harder to search than word marks. A good trademark search is important, because unlike copyrights, trademarks can be infringed innocently. You can be liable for trademark infringement if you adopt a logo that is confusingly similar to someone else’s logo for similar goods or services, even if you didn’t know about that pre-existing logo.

For affirmative protection, your lawyer should talk to you about federal trademark registration. She should also check with you about ownership of the trademark rights: whether that will be shared by the three authors, or just one of them, or the publisher.

3 – Your agreement with the publisher
Finally, you will need the lawyer to help negotiate and draft appropriate terms for your publishing contract. The important issues include how much you will get paid, and on what basis, for example, as a flat fee or royalties, will there be an advance, etc.; and the scope of rights you will be granting to the publisher, which can range from the first edition in hardcover through paperback editions, whether the rights include second or revised editions, whether the publisher will be your exclusive agent for subsidiary rights — such as rights to translate the book into foreign languages, or to adapt it as an animation or online work, the geographic territory, and the length of time.

Your attorney should also be familiar with other standard terms in publishing contracts (e.g., royalty statements and audits, warranties and indemnification, termination provisions, dispute resolution, governing law). If you start with a proposed contract from the publisher, she will need to spot any problematic or missing provisions. If you are lucky enough to start with your own proposal to the publisher, your attorney will have to provide a thorough draft with all the necessary terms and conditions.

Your conference call with the publisher will be a first step in this process. However, you should not agree to any terms until you have a lawyer — so that you don’t inadvertently agree to something that is unnecessarily unfavorable. Unfortunately, some publishers take advantage when they are talking to new authors who don’t have experience or legal representation. If you talk to the publisher before you’ve hired counsel, say that you are happy to accept the publisher’s suggestions or draft contract, which you will then review with your lawyer and get back to them.

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Legalities is a service mark of Linda Joy Kattwinkel. © 2005 Linda Joy Kattwinkel. All Rights Reserved. The information in this column is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel.

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