biz ladies: understanding intellectual property


Today’s Biz Ladies post comes from Kelli Proia, the principal attorney at IP in Focus in Massachusetts, an intellectual property boutique. Kelli helps her clients maximize the return on investment in their most important business assets — their people and their intellectual property — while minimizing the risk of doing business in today’s marketplace. Throughout her many years of in-house practice, Kelli has helped her clients protect their intellectual property, buy and sell over $2 billion worth of companies and expand into new markets.

For today’s post, Kelli shares her wealth of knowledge on protecting your creative assets, understanding contracts and the benefits of having a lawyer work through all the technical bits. Thank you, Kelli, for such a helpful post! — Stephanie

Read the full post after the jump . . .

If you’ve found yourself uttering the words, “I know I should talk to a lawyer, but . . . ,” you are not alone. Let’s face it — as a business owner, it’s easier to just sign the contract, put off filing that trademark registration or not incorporate your business. Lawyers are expensive. They can make things difficult. But I am here to tell you that an ounce of prevention is truly worth a pound of cure.

Earlier this summer, I received a call from a good friend who told me that a literary agent agreed to represent him. He knew people who were being represented by the agent with some success. He thought it was a good contract and didn’t have a problem signing it. In an overabundance of caution, he wanted me to take a look “just in case.”

The contract was sent as a PDF file, so it was difficult to change (Red Flag #1). It was short, at 1.5 pages (Red Flag #2). It only spelled out the rights and obligations of the agent (Red Flag #3). I made some changes and added a few provisions, and my friend sent the new draft to the agent. The agent’s response was quick and surprising.

The agent told my friend that he was disrespectful, that he lacked trust and that everything that he had requested was implied and did not need to be in the written agreement. The agent then insulted my friend, telling him that the firm never really wanted to represent him. Lastly, they told him they wouldn’t work with him because he had a lawyer.

I have been an intellectual property lawyer for 13 years. Over the years, I have had the opportunity to review a lot of contracts. I’ve been yelled at, hung up on and insulted for the terms I have asked for, but this was the first time someone rescinded an offer. I was shocked. What had I asked for that would cause such a strong reaction?

I simply defined terms that were ambiguous. I added a state of law to govern the contract. I asked that my friend have the right to audit the agent’s accounting books and preview publishing contracts before they were signed. I didn’t change the agent’s compensation or any of the agent’s rights. There was nothing out of the ordinary.

My friend was upset. I felt terrible that I had cost him an agent, but I knew I did the right thing. Luckily for me, he knew it too. He was angry with the agent. He knew that if he had signed that contract, he probably would have been taken advantage of with no chance of recourse. He was disappointed but thankful.

But what about all the people who signed that contract? Did they see the issues? I’ve represented enough artists, authors and illustrators to know why they signed it. They were blinded by the excitement that their dream had come true. So many of them have told me, “I want this so badly. I’m willing to do anything.”

Well, what are you willing to do or give up for that licensing deal? How much control are you willing to give away to be represented by an agent? If you find yourself in my friend’s position and saying, “I know I should talk to a lawyer, but . . . ,” here’s what I recommend you do:

1. Please do not get your legal advice from the other party. The advice is often wrong. I’m never sure whether they know it’s wrong, but it is usually self-serving. In my friend’s case, the agent told him that the right to sue and the right to audit were “implied.” Unfortunately, if there is a written agreement, nothing is implied. A court will always assume that all of the terms that were agreed upon have been spelled out in the document and will only look to the document to determine who has what rights.

2. Try to be dispassionate about the outcome. When I protest a term in a contract, it’s rarely the opposing side that argues with me. Nine times out of 10, it’s my client who puts up the biggest fuss. I often hear my client argue, “Don’t say that. They’ll walk away.” To which I say, “It’s okay to walk away from a bad deal.”

3. Look at a contract as if it were a prenuptial agreement. You might be “in love” with each other now, but consider what could happen if the relationship sours. Are you protected? What if my friend thought his agent was skimming some money from him? If he had signed the contract as is, he would have given away his right to sue and his right to audit the agent’s books even though the agent had total control over all funds (both incoming and outgoing).

Another onerous term included in my friend’s contract was that the agent had the right to bind my friend to any publishing agreement the agent wanted without my friend’s consent. What if my friend hated the deal or couldn’t meet the obligations that the agent signed him up for? He would have to perform or face defaulting on the terms of the contract. It is so important to factor in the “what ifs.”

4. Lastly, please consider hiring a professional. A lawyer is dispassionate. I can look at the terms of an agreement objectively. I want to see my clients succeed, but I also want to make sure they get the best result. I’ve seen what can go wrong, and I want to protect you from a bad outcome.

It shouldn’t cost a lot of money to have an attorney review a contract. Call up a lawyer and tell her, “I need to have a contract reviewed. It’s x number of pages. I can pay $XYZ. Would you be able to help me?” I know there are many lawyers who would help you.

If you truly can’t pay for legal services, consider calling Volunteer Lawyers for the Arts. It’s a wonderful organization that can pair you up with a legal professional who might be able to help you with your matter free of charge. Also, they offer education courses that could help you spot issues and negotiate your own agreements.

Sara

Good post. I wonder… how do I find lawyers that represent artists in my area? I have this feeling that most lawyers wouldn’t understand my needs unless they have experience with the creative field.

Kim (at www.loveumadly.com)

Thanks so much for the advice. I’ve recently completed a memoir about my con-man father who disappeared 25 years ago and the search to find him. I’m in the search for representation now and so this advice hit very close to home. We often wince at the thought of an attorneys bill, but we must remember that sometimes we have to spend money to make money (and certainly to make sure we don’t lose our right to it!).

Teresa

OMG! Thank you so much for posting this. I tend to shy away from looking into licensing my work for fear of this very thing: fear of a contract… fear of a lawyer. I guess at some point I will have to step out on faith.

Kelly

What if a contract with a literary agent has already been signed? If there any course of action to take retrospectively? Thank you for the article!

Vitor Hugo

Oh, thanks for the article, Kelli. I now can say, I’m relief. Years ago, I reviewed a contract and questioned some points (no, I’m not a layer, but know my rights, hehe)… people get really mad, the same way your friend agent.

Yes, I lost “the opportunity” which wasn’t that cool (turns out to be a bad thing!)

Jaimee

Kelli, this is an EXCELLENT article. I’m an artist and a lawyer and I always tell my artist friends to always read the fine print in a contract or hire someone that can help decipher it so they can’t get taken advantage of. I actually wrote a post about this in response to a recent T-shirt contest. http://www.blog.jaimeetodd.com/artist-beware/

Clare

Such a great post, thank you! With regards to the link Jaimee just posted, most people are not aware that the fine print of the agreements of photo sharing websites, and free email, or free website sites grants them the right to use your content wherever and whenever they want in perpetuity. You retain the copyright, but have no control over where it might end up being used. Think twice before signing up for any google products, photobucket, shutterfly, picasa. Particularly if you are using it for your creative work.

Always read the fine print, first.

Rita in Chicago

Thanks for this article. Lawyers for the Creative Arts are great and have offices all over the country. They reviewed my contracts for mudic and design, and helped with my incorporation papers. They pair you with pro-bono lawyers (for small fee). Excellent.

Maya

Such a great post! Completely agree with Kelli on all, and yes, Volunteer Lawyers for the Arts is a wonderful resource and connects artists of all disciplines to pro bono lawyers. Their Art Law Line is here: 212.319.2787 x1 and if they can’t help you, they will usually direct you to an organization that can or you can go in for one of their drop-in clinics. They also have a great new online resource to help you learn terms and basics about certain legal issues (but really, do get a lawyer and don’t try to do it yourself – every situation is different and you want the appropriate advice for your particular situation).

Donata Fister

Thanks for the great post. My husband and I run a small engineering consulting and software business. You would not believe what is non-disclosures agreements and terms and conditions from companies both big and small contain. Some want to prevent you from working for anyone else. Some want your IP just for selling to them and on it goes. We read them with a fine tooth comb and have turned down business because of the conditions.

My advise: either learn to read the boring legalese or use a lawyer. We do both

Erin Lewis

“it’s easier to just sign the contract, put off filing that trademark registration or not incorporate your business.”

We did this recently- signed a contract for an llc, blindly. While not strictly creative, the intellectual property (my husbands designs for a product) has been trumped by our partners financial investment. And now, because we didn’t review the contract with a lawyer, by husbands dream is soon to become someone else’s cash cow. It’s heartbreaking- if only I had read this article 2 months ago, the course of my future might have been markedly different. Thanks for preventing so many other heartbreaks. Great article!

LEAVE A COMMENT