TRADEMARK LICENSES FOR BOOKS
Publishers of all types of books are increasingly partnering with other parties, including magazine and newspaper publishers, other media companies, consumer product companies and nonprofit organizations, to take advantage of the consumer recognition associated with the brands of those companies. In a typical deal, the publisher gets a license to use the trademarks of the company or organization in exchange for a royalty from sales of books bearing the trademarks. In some cases, the company may also provide content to the publisher for use in the licensed books.
Some of the key issues to be addressed in putting together a trademark license deal for books are as follows:
- Can the licensing company also license its marks to other publishers for similar types of books?
- Can a publisher that licenses trademarks from one company also license trademarks from another company that sells products that compete with the products of the first company? If so, will the publisher be limited to using the second company’s marks on books that are in a different subject area or for a different audience than the books covered by the first company’s trademark license?
- Can the publisher publish other books on the same subject matter as the licensed books without using the licensed trademarks?
- Can the publisher also use trademarks of others with the licensed trademarks?
Scope of License
- What formats are covered by the license?
- Can the publisher use the trademarks only on print books, or does the license extend to electronic editions, audiobooks or other formats?
- What territories are covered by the license? If the trademarks are only registered in the United States, can the publisher use the trademarks outside of the U.S., and will the licensing company give any warranty of noninfringement for use outside of the U.S?
- Can the publisher grant sublicenses to others to use the trademarks in connection with the exercise of subsidiary rights in the books, such as foreign translation editions?
Marketing and Distribution
- Will the licensing company buy and resell copies of the licensed books? If so, at what price and on what terms?
- Will the licensing company be restricted from selling into any specific channels of distribution?
- Will the licensing company be permitted to purchase books and give them away as premiums to induce other purchases by its customers or members?
- Will the licensing company promote the licensed books and direct purchases to the publisher? If so, will the licensing company get a commission from those sales?
Will the publisher be required to publish a minimum number of titles using the licensed trademarks?
Will the publisher be required to sell or guaranty sales of a minimum quantity of books, or, alternatively, pay a minimum guarantied royalty? If so, how will that guarantied royalty be structured – on a book by book basis, on the entire line of books, or otherwise? Term and Termination
Is the agreement limited to a fixed term, or can the publisher continue to use the trademarks on the licensed books for as long as those books remain in print?
If there is a fixed term, does the publisher have a sell-off period to sell off remaining inventory at the end of the fixed term?
Who owns the publishing rights in the books, and can the publisher continue to sell the books after termination of the license without using the licensed trademarks?
If the license to use the trademarks is terminated as to one book, can the publisher continue to use the trademarks for all other licensed books?
Trademark licenses for books can be of benefit to a publisher, provided the trademarks being licensed have consumer recognition and provided there is a good fit between the trademarks and the content of the books for which they will be used. However, publishers should ensure that their investment in the licensed books will be protected, and that they will have a fair opportunity to recoup that investment.