Derivative Works in Publishing Contracts, Part Deux!

Last week we took a look at the meaning of "derivative works" and who owns the copyright on them.

This week we'll return to John Q. Penman's contract with Fictitious Publishing Entity and see what it has to say about derivative rights:

Derivative Works. The copyrights in the Work and all derivative works created by Author belong to Author exclusively and in perpetuity. The copyrights in derivative works based on the Work which this Agreement authorizes Publisher to create, including without limitation performance copyright in sound recordings and audiobook versions of the Work will, at the Publisher's option, be owned by the Publisher, it being understood that such registration does not affect the ownership of the copyright in the Work or derivative works based upon the Work and created by Author.

Let's take a closer look.

"Copyrights in the Work and all derivative works created by Author belong to Author exclusively and in perpetuity." 

This is good language. It means John owns both the work and all derivative works that John creates.

"The copyrights in derivative works based on the Work which this Agreement authorizes Publisher to create, including without limitation performance copyright in sound recordings and audiobook versions of the Work will, at the Publisher's option, be owned by the Publisher,"

At first glance, this looks very bad, because it gives the Publisher a copyright interest. If possible, John should get this part of the language removed.

That said, note that this language doesn't grant the Publisher any independent right to create derivative works - the Publisher's copyright interest is only in derivative works ... which this Agreement authorizes Publisher to create - meaning that if the contract doesn't state that the Publisher has a right to create derivative works, this grant of copyright gives the publisher...nothing.

The key, if the Publisher refuses to remove this language, is to read the contract carefully to see what, if any, rights the Publisher has to create derivative works. If the Publisher doesn't have any rights to create derivative works, then this language doesn't actually cause a problem.

The final verdict? Remove that clause if you can, but if the Publisher insists on keeping it, read the rest of the contract very carefully to see what actual risk the language creates. If none, this might not be the deal breaker it initially appears.

Posted by Susan Spann

Susan Spann is a California publishing attorney and the author of Claws of the Cat (Minotaur Books, July 16, 2013), the first novel in the Shinobi Mystery series featuring ninja detective Hiro Hattori.

Derivative? Who You Callin' Derivative?

We're taking a break from our tour of John Q. Penman's contract this week to talk for a moment about Derivative Works.

The author of a copyrightable work is also the exclusive owner of the right to create derivative works based upon (copyrightable elements of) the original.

In copyright and publishing parlance, Derivative Works are any and all works (in all forms and formats) based on or arising out of an original creative work, as well as situations, themes, characters, worlds, and places featured in the original work.

This covers a lot of territory.

Sometimes, derivative works are easily spotted. Sequels, for example, are always derivative.

A screenplay about the character "Hermione Granger" (as created in J. K. Rowling's Harry Potter series) is derivative of the Harry Potter series.


A comic book about the adventures of Wesley Crusher's great-nephew is also derivative, even though Wesley Crusher never had a great-nephew in Star Trek: The Next Generation. If the comic is set in Roddenberry's world, it is derivative.

A movie about a cloned Imperial trooper who fled his battalion rather than fighting in the Clone Wars is derivative of the Star Wars saga (assuming we're talking about "those" Imperial troopers and "those" Clone Wars) even if the individual characters whose story we follow never appeared in the Star Wars universe. The reason? The world George Lucas built belongs to him - and so do all derivative works based on his creations.

Does that mean Lucas can stop anyone from creating space operas about cloned soldiers? No. (And I'm sure you'll all sleep easier for knowing it.)

Derivative works must be based upon copyrightable elements of the original work. You cannot claim that a work is "derivative" if the only shared elements are non-copyrightable archetypes.

For example:

A novel about Luke Skywalker's dentist is probably derivative.

A novel about a dentist stuck on a lonely outpost planet? Probably ok (but please don't name that planet "Tatooine")

The difference? One references a copyrighted world belonging to someone else. The other is built on archetypes to which no copyright attaches.

The concept of derivative works, by definition, raises the spectre of "fan fiction" - and the literal legal response is this: derivative fan fiction is copyright infringement if the author didn't grant permission for its creation. That's the law. It isn't "fair use" (with some rare exceptions too technical to dive into here) - even if it's done "in good fun" and even if no money is made on the endeavor. People can - and do - argue all kinds of points on this topic, but it doesn't change the law. It is what it is.

Forcing the lid back down on that particular wiggling can, let's move on to the author take-away for today:

It's vital to understand "derivative works" because most publishing contracts mention them in one context or another (and sometimes, more than one).

The bottom line for authors: retain control of your rights to derivative works. Do not give them away to the publisher, or to anyone else without adequate compensation separate from what is offered for publication of the original work.

We'll look at derivative rights again next week, but that's the short-form introduction. (And please ignore the worms peeking out of that can.)
 Posted by Susan Spann  
 
Susan Spann is a California publishing attorney and the author of Claws of the Cat (Minotaur Books, July 16, 2013), the first novel in the Shinobi Mystery series featuring ninja detective Hiro Hattori.