Thursday, May 17, 2012

Can We Do Themed Bento Box Book Using Star Wars, Lego and Snow White?

Dear Rich: I am writing a book about themed-Bento boxes and am getting ready to sign the contract except I'm concerned about  one of the provisions. It says that if I deliver anything that contains "materials produced by another person or taken from another previously published or copyrighted work," I have to get "valid written permission(s) from the proprietors." If I don't do that the Publisher can get the permission and charge me for it. The provision goes on to say that I indemnify the Publisher for any third party claims of infringement. I am planning to include many heavily themed Bento boxes including a Stars Wars box, a Lego shaped box, and a Snow White box. In the Star Wars box, I would include things like a skewer of grapes made to look like a light saber or a Yoda made from apple slices. For the Snow White box, I was thinking that I would use one of those Snow White cookie cutters to make a sandwich, but I could easily skip that part to avoid the Disney reach. The titles for the boxes can be flexible. How does that provision affect what I'm planning to do? We’re very excited about your question because it allows us to use several SEO-busting keywords like “Star Wars,” “Disney,” and “Lego” in our entry (a trifecta for Dear Rich Google Analytics). You've done us a great service, at least until we get dinged by Panda, Penguin, or some other black and white animal Google algorithm. By the way, we’re getting a lot of contract provisions to review these days. We hope that’s a sign that people are getting more contract offers … especially book contracts.
Right, you had a question. Because you're creating a how-to type food book-- not selling themed-Bento boxes -- we don't think you will need trademark permission. Activities like creating and photographing Yoda apple slices or a Snow White shaped sandwich, don't seem to be a trademark problem, especially if you're using a licensed cookie-cutter. (Note that as we speak, Disney lawyers are seeking to register the fairy tale moniker for processed fruit snacks). As for the Lego Bento box, we think an authorized Bento box would be a better choice for your book (versus creating a fake lego box). In general, your use of Disney, Star Wars and Lego, feels like an editorial/informational use (explained in a previous entry). In other words, you're less likely to trigger infringement if you write about or comment on trademarks. What you can't do is imply an association with, or dilute or tarnish these marks, for example, produce a whole Star Wars Bento box book (more Stars Wars recipes, here).
Copyright. You're probably fine reproducing these Bento versions of copyrighted characters without permission. It's possible, though doubtful, that some over-caffeinated general counsel may send a cease and desist claim but nowadays most media-savvy companies shy away from overzealous pursuit of iffy copyright claims (especially claims like these that may be excused by fair use).
Indemnity. Indemnity provisions are really a drag. Under your provision, you must get all necessary permissions and if a third party sues you for infringement, you're on the hook. So, despite our belief that permission may not be necessary, if your publisher disagrees, you'll have to either deal with it (good luck getting permission from this gang), pay for your publisher's permissions, or remove the material upon request by your publisher. Another possibility is that the publisher will be oblivious to the whole issue and nobody will ever complain. We hope that's the case.