BY:Michael I. Rudell
(Originally published in the Entertainment Law column in the New York Law Journal, September 28, 2001.)
Commercial tie-in arrangements have been the subject of much recent debate in the literary publishing community after the announcement that Faye Weldon, a well-known author, was paid by Bulgari, the international jeweler, to have its name mentioned a number of times in her recent book.1 Originally published in a limited edition to be distributed by Bulgari, “The Bulgari Connection” was then published in Britain by HarperCollins and is scheduled to be published under the same title by Grove/Atlantic in the United States. Amidst these discussions, questions arise as to whether there are any provisions in the customary agreement between the author and publisher which are relevant to such an arrangement and what issues should be covered in the agreement (the “Branding Agreement”) between the entity seeking to be identified in the novel (the “Branded Entity”) and the author.
A starting point is the section in the form agreements promulgated by the major trade publishing companies in the United States (the “Publishing Agreement”) covering the author’s representations and warranties. The issue would be settled quickly if those provisions contained language similar to that customarily found in agreements in the broadcasting industry. Those agreements require the entity furnishing broadcast materials to warrant that it has not, directly or indirectly, been paid or accepted any money or other valuable consideration from any person, firm or corporation in return for the inclusion of any matter in those materials. This language, born out of reaction to the quiz show scandals decades ago, reflects the provisions of sections 317 and 508 of the Federal Communications Act. However, most, if not all, Publishing Agreements do not contain this concept.
Another relevant provision in the Publishing Agreement is the much-debated “acceptability clause.” This provides, in general, that if the publisher does not deem the manuscript submitted by the author to be satisfactory, the publisher may ask for revisions and/or reject the manuscript. The content of this provision differs from company to company and also will vary depending on the stature of the author involved. Variations include a requirement that the manuscript be “editorially satisfactory” or that it conform in length, style and format to the author’s prior work.
May a publisher deem a manuscript unsatisfactory if the author has included references to a product or service in return for compensation? A publisher might attempt to do so asserting that a) the existence of the arrangement inherently tarnishes the book, even if the literary merits of the book are unaffected; or b) the literary quality of the book is diminished by virtue of the number or nature of the references to the Branded Entity; or c) such references compete with products offered by an entity related or affiliated to the publisher (e.g., Universal Studios Themeparks pays for mentions in a book to be published by Hyperion, which is owned by Disney). If the publisher took the position in a) or c) above, it could insist that all such references be deleted (or perhaps that the author waive all rights to compensation from the Branded Entity), failing which it could reject the manuscript. If it took the position in b) above, and didn’t reject outright all references to the Branded Entity, but wanted them reduced and/or moderated, to what extent would the author, under its agreement with the Branded Entity, be permitted to make such changes?
It is possible that, even after reviewing the specific language of the acceptability clause, a clear answer will not emerge because to date these are not issues on which authors or publishers have focused.
The Publishing Agreement also contains a clause under which publisher’s counsel may review the manuscript to ascertain whether there is a risk of potential legal claims or governmental action. If counsel concludes that such a risk exists, the publisher may ask the author to revise the manuscript to eliminate it, and if the author fails or refuses to do so, the publisher may terminate the agreement. If all of the references to and descriptions of the Branded Entity comport with the terms of the Branding Agreement, there is little likelihood that counsel will have concerns in this regard. However, in the unlikely event that the Branded Entity bargained to have one of its competitors depicted in a negative light, this might raise such concerns.
Under the Publishing Agreement the author is obligated to obtain and deliver to the publisher any permissions that are required to enable the publisher to exercise any of its rights. (Frequently, an author who mentions or depicts a product in a book does not need to obtain a release or permission from the proprietor of that product.) The author must determine whether the nature of its relationship with the Branded Entity is one that requires it to deliver such a permission to the publisher.
Whether or not the author believes there is a legal obligation to do so, the author should disclose to the publisher any arrangements which he or she has made with the Branded Entity, both to avoid embarrassment and to enable the parties to the Publishing Agreement to address in advance any potential problems. A publisher which in a given circumstance welcomes such an arrangement might also agree to become part of the transaction and promote the Branded Entity in connection with its promotion of the book. If the publisher receives compensation from the Branded Entity for doing so, the author might seek to provide that the amount of such compensation be applied toward recoupment of the advance paid to the author.
The Branding Agreement might, at first blush, appear relatively simple, but there are numerous issues which it should address.
At the outset, the parties must specify the type of references to the Branded Entity which are to be made in the book and the minimum number of times that such mentions need occur.
Will the Branded Entity expect to have rights of approval over reference to it and the editorial content of the book? What will occur if the publisher requires revisions of those references or their deletion? Assumedly, the author will want to be certain that he or she can proceed with the book in compliance with the publisher’s requirements without being in breach of the Branding Agreement. The author also will seek to provide that in the event of a breach or threatened breach of the Branding Agreement, the sole remedy available to the Branded Entity will be an action for money damages at law, and in no event will the Branded Entity be entitled to enjoin the exploitation of the book. This may be of concern to the Branded Entity if it is displeased with the manner in which it is depicted in the book.
Because it is extremely rare that a Publishing Agreement gives an author approval over advertising and publicity pertaining to a book, the author will not be in a position to guarantee that any mentions of the Branded Entity will made in these materials. Interestingly, when the name of the Branded Entity appears in the title of the book (such as “The Bulgari Connection”), this issue is circumvented to some extent because virtually all advertising relating to the book will include the name of the Branded Entity.
The parties to the Branding Agreement should consider whether the Branded Entity must be mentioned in foreign translations of the book. If so, will it have the right to review and approve each translation to make certain that the originally intended meanings and nuances are not distorted in translations? If worldwide rights to the book are granted to the United States publisher, will that publisher agree to such rights of approval?
The author may wish to write one or more sequels in which characters who appear in the original book are depicted in different settings and/or situations. If the Branded Entity has become identified with these characters, the author should be certain that it has the right, but not the obligation, to depict it in such sequels. The Branded Entity may wish to obligate the author to include it in some specified manner in sequels, and the author might bargain for additional compensation if the author does so.
The parties also should consider what occurs if there are derivative works based on the book, most particularly motion picture and television productions. This sword is double-edged, because the author must be in a position to allow the producer to draw freely from the book with no restrictions but not be obligated to require the producer to include any particular materials in the production. Unlike the book industry in which, most often, the author owns the copyright in the book and controls the final product, in the motion picture industry, when books are made into films, final control customarily rests with the producer/financier which may include or delete any materials it wishes.
Also to be determined is whether the author will be entitled to compensation from the Branded Entity if it is depicted in an audiovisual work, and, if so, what requirements must be met for the author to become entitled to such compensation.
The Branding Agreement should also confirm that the book publisher may use the Branded Entity’s name, trademark, logo, description and other relevant items in the book, all advertising, promotion and publicity relating to it, and in all editions and derivative works. There may, however, be some discomfort on the part of the Branded Entity (given considerations of trademark protection, product reputation and others) to allow such a wide scope of usage, and issues concerning remedies and the author’s control of his or her creative work then come into play.
Finally, the author must be free to disclose the arrangement to the publisher and both the author and publisher must be free to disclose it to the public.
The concept of a company’s paying for its product to appear in a theatrical motion picture has existed for years, and “The Bulgari Connection” is not the first instance in which an entity other than the publisher has paid an author in connection with the writing of a literary work. However, given the nature and extent of the discussions and articles regarding this situation, it is apparent that the issues mentioned above will be relevant in several future arrangements.
1 Martin Arnold, a columnist for the New York Times, states that he counted 34 mentions of Bulgari and about 15 other “rhapsodies of jewelry” which in the context of the novel directly refer back to the jeweler.