Whose book title is it, anyway?

Zick Rubin

Zick Rubin

Professor Charlotte Smith, an up-and-coming young entomologist, decided to write a textbook for the always-popular, upper-level course on spiders.  After putting out a few feelers, she submitted a proposal to Six Legs Press, a leading publisher of  books about insects.  Six Legs loved the proposal and offered Professor Smith a contract. Charlotte was so abuzz with excitement—”tenure, here I come!” she yelled—that she signed the contract without even reading it.

After three productive years of weaving together the strands of spider research, Professor Smith  submitted the  manuscript—complete with 100 black-and-white illustrations and a color insert—to Six Legs.  She gave her labor of love the perfect title:  Inside the Web:  The World of Spiders.

A year later, when Charlotte  received the package contining the first copy, she was thrilled— until she ripped open the package and looked at the cover. To her surprise and dismay, her book was now entitled just plain Introduction to Spiders. When she protested, her editor told her that the Six Legs sales reps had all felt that Inside the Web sounded too much like an Internet primer. So the publisher unilaterally changed the title. “I meant to tell you,” the editor said, “but I was laid up that week with a mysterious tick-borne fever.”

Professor Smith felt that her academic integrity was hanging by a thread.

Who Determines a Book’s Title: Author or Publisher?

Publishers’ boilerplate contracts often say that the publisher has the exclusive right to choose the book’s title. When Professor Smith finally read her contract, she found that she was out of  luck.

Next time, she will know better.

From the author’s standpoint, it is best for the contract to expressly state that the book’s title remains subject to the author’s written approval.   The more clout the author has, the more likely the publisher will be to agree to such approval.

Even without such a right of approval, however, most publishers will agree that the author has a right to consult on the title. “Consultation” is not “approval.”  It means only that the publisher must listen respectfully before it says “no.”  But consultation is still far better than nothing. In the last analysis, the book is your baby,  not your publisher’s, and you should be intimately involved in naming it.

After a well-received first printing, Professor Smith persuaded Six Legs to restore her original title for subsequent printings: Inside the Web:  The World of Spiders.  It became an entomological classic with five successful editions. Competing spider textbooks crept in and out, but none of them could really hang on.

Then one day, Professor Smith saw an announcement of a forthcoming textbook on spiders by her arch-rival, Dr. Arnold Roach. Roach’s book was to be entitled Within the Web:  The World of Spiders. Charlotte couldn’t believe it. It felt like a sharp punch in the cephalothorax. She and her editor immediately wrote to Roach and his publisher: “Your title is mimicking ours.  Change it immediately.”  They got back a one-sentence reply, “Sorry, you can’t copyright a book title.”

It’s an oft-repeated truism that book titles, as “short phrases,” are not protected by copyright.  The truism is probably true.  But it doesn’t mean that book titles can’t be protected at all. Distinctive titles, though not generic ones, are protected by the law of trademarks and unfair competition.

A title that simply names a book’s title or market— like, say,  An Introduction to Spiders— is almost impossible to protect. That’s why there are so many textbooks entitled World History, Introduction to Economics, and Intermediate Calculus. These books are distinguished by the names of their authors but not by their generic, plain-vanilla titles.

The Big Questions

However, authors and publishers of books with distinctive titles, like The Big Questions, may be able to stop others from using confusingly similar titles–especially if they become well-known.

Introduction to Philosophy

Generic books titles, like An Introduction to Philosophy, can’t be protected, as many textbooks can share that same generic title.

But when a book with a unique title becomes known in its field, its title becomes a protectable trademark. If Professor Smith and Six Legs can show that Roach’s Within the Web is likely to confuse consumers—in particular, professors choosing textbooks—then they may be able to force Roach and his publisher to change their copycat title.

If a book’s title is distinctive and the book has had two or more editions (a single edition is not enough), the title may even be eligible for federal trademark registration, just like Coca-Cola®  and  Windows®. Even unregistered trademarks can be protected, so a registration may not be essential. But a federal registration strengthens the author’s and publisher’s hand by providing presumptive evidence of the distinctiveness and ownership of the title.

Who Owns the Title: Author or Publisher?

After five successful editions, Professor Smith and Six Legs had a falling out.  At this point, each of them wanted to proceed on their own with Inside the Web.  Charlotte  wanted to take Inside the Web to a new publisher.  Six Legs wanted to start an Inside the Web entomology series with books by other authors.

Between the author and the publisher, who owns the title?

As a general matter, the owner of a trademark— here, a book title— is the party that “controls the nature and quality” of the goods that have been marketed under that trademark. But whether the “quality-controller” of a book is the author or publisher can be a tangled question, especially when the publishing contract does not expressly address the matter.

A leading case on this question,  Liebowitz v. Elsevier Science Ltd. (1996) involved a dispute between a scientist and a publisher about the titles of a group of professional journals. The journals had been launched and edited by the scientist and published by the publisher. Under the facts of that case, an influential federal district court judge ruled that the trademarks were owned by the scientist-editor, who had the greater involvement in controlling the quality of journals.

The judge, Lewis Kaplan, noted that “the journals. . . . present a combination of intellectual content [provided by the scientist-editor] and substantive editing, packaging and technical editing, and subscription fulfillment [provided by the publisher]. At bottom, however, . . . without their content the journals are no more than ‘bound printed paper and glue.'” Substitute “author” for “scientist-editor,” and the same is true for most textbooks.

Ownership of a book’s title may also be negotiated by the author and the publisher when they first enter into a contract. In some instances, the author may want to insist that the contract make clear that he or she owns the title.  This may be especially important and appropriate when the author is already using the prospective title in other contexts, such as blogs, lectures, and consulting activities.

In Professor Smith’s case, Six Legs eventually swung around and conceded that the title belonged to Charlotte. She found a new publisher for  Inside the Web and it went on to many more successful editions, not to mention the recent interactive online version. And, yes, Professor Smith’s students and friends lovingly call it “Charlotte’s Web.”

Zick Rubin, a former college professor and textbook author in the field of social psychology, is a publishing, copyright, and trademark lawyer in Boston.  He can be contacted at zrubin@zickrubin.com