Jonathan Kirsch

Law Offices of Jonathan Kirsch
A Professional Corporation
1880 Century Park East, Suite 515
Los Angeles, California 90067
Tel. (310) 785-1200 Fax (310) 286-9573
Cell (310) 871-6230
Email: jk@jonathankirsch.com
Website: www.jonathankirsch.com

Jonathan Kirsch is a publishing and intellectual property attorney based in Los Angeles, an expert witness on publishing industry matters, an Adjunct Professor on the Faculty of New York University’s Professional Publishing Institute, and a lecturer and consultant on publishing matters.

Please scroll down for a detailed description of our legal services.

Kirsch’s books include Kirsch’s Handbook of Publishing Law, Kirsch’s Guide to the Book Contract, which are now in revision for a new and updated single-volume edition from Silman-James Press. Kirsch is also the book editor of The Jewish Journal, a longtime book reviewer for the Los Angeles Times , and the author of 12 books of history and biography, including the newly-published The Short, Strange Life of Herschel Grynszpan: A Boy Avenger, a Nazi Diplomat, and a Murder in Paris (W. W. Norton/Liveright).

Jonathan Kirsch is an attorney whose practice focuses on publishing law, copyright, trademark, and other intellectual property matters. Kirsch is rated “A-V” by Martindale-Hubbell, and his clients include book, magazine, newspaper, audio, video and electronic publishers, authors, agents, distributors, designers, artists and photographers, among other publishing industry businesses and professionals.

Among his clients are enterprises and individuals outside the media whose business activities include intellectual property assets and issues, including health care professionals, educational and religious institutions, and manufacturers and distributors of food, apparel, and architectural and building products.

Kirsch and his colleagues practice as the Law Offices of Jonathan Kirsch, 1880 Century Park East, Suite 515, Los Angeles, California 90067, Tel. (310) 785-1200, Fax (310) 286-9573. Email: jk@jonathankirsch.com. Website: www.jonathankirsch.com. The firm, which is a California professional corporation, accepts VISA, MasterCard, American Express and Discover.

Kirsch is the author of two leading reference works on publishing law, KIRSCH'S HANDBOOK OF PUBLISHING LAW for Authors, Publishers, Editors and Agents and KIRSCH’S GUIDE TO THE BOOK CONTRACT for Authors, Publishers, Editors and Agents, both of which are being combined, revised, expanded, and updated for re-issue as a single volume to be published by Silman-James Press.

Kirsch delivers annual lectures on recent developments in publishing law at Book Expo America, the annual trade show and convention of the American Booksellers Association, and he is an Adjunct Professor on the faculty of New York University’s Professional Publishing Institute.

Kirsch writes and lectures on legal topics relating to the publishing industry for the Independent Book Publishers Association (formerly the Publishers Marketing Association); the Western Publishing Association; the Practising Law Institute; the Intellectual Property, Internet and New Media Section of the Beverly Hills Bar Association; the Publishers Association of the West; the Publishers Association of Los Angeles; the National Museum Publishing Seminar of the University of Chicago’s Graham School; and the ABA Forum on Entertainment and Sports Law; the Authors Guild, the American Society of Journalists and Authors, the Mystery Writers Association, the Independent Writers of Southern California, California Lawyers for the Arts, Sisters in Crime, Southwest Manuscripters, and other publishing industry associations.

Kirsch has also served as a guest lecturer at the Bowers Museum, the Skirball Cultural Center and Museum, the American Jewish University, the University of Southern California, the Center for Inquiry West, the Center for Religious Inquiry (New York and Los Angeles), and the Berkeley, Irvine, Los Angeles, Santa Barbara and Santa Cruz campuses of the University of California.

His recent featured addresses include: Antioch University (Creative Writing Program – Commencement Speaker, 2007), the Association of Jewish Libraries (Keynote Speaker, 2007), the Macaulay Honors College at the City University of New York (Keynote Speaker, 2008), and the University of California at Santa Cruz (Distinguished Alumnus Lecture, 2009).

Kirsch serves as an expert witness in various publishing-related matters, including cases involving claims of copyright infringement, breach of contract, libel, invasion of privacy, and idea misappropriation.

Kirsch serves as legal counsel for the Independent Book Publishers Association (formerly Publishers Marketing Association), which presented him with its Benjamin Franklin Award for Special Achievement in Publishing, as well as pro bono counsel for the Center for Media Literary, California Lawyers for the Arts, and The Jewish Journal of Greater Los Angeles. Kirsch has contributed book reviews to the Los Angeles Times continuously since 1968 and serves as the book editor of The Jewish Journal. He also contributes book reviews to the Washington Post, the Toronto Globe & Mail, and other publications.

Kirsch is a former on-air host and commentator guest host for NPR affiliates KCRW-FM and KPCC-FM, and has appeared as a publishing industry expert on various NPR and Public Radio International programs.

Kirsch is the author of three national bestsellers, THE HARLOT BY THE SIDE OF THE ROAD: Forbidden Tales of the Bible (Ballantine Books, 1997), MOSES: A Life (Ballantine Books, 1998), and KING DAVID: The Real Life of the Man Who Ruled Israel (Ballantine Books, 2000). He is also the author of THE WOMAN WHO LAUGHED AT GOD: The Untold History of the Jewish People (Viking, 2001, the best-selling GOD AGAINST THE GODS: The History of the War Between Monotheism and Polytheism (Viking, 2004), and the best-selling A History of the End of the World: How the Bible’s Most Controversial Book Changed the Course of Western Civilization (HarperSanFrancisco, 2006).

His latest book is THE SHORT, STRANGE LIFE OF HERSCHEL GRYNSZPAN: A Boy Avenger, a Nazi Diplomat and a Murder in Paris (W. W. Norton/Liveright, 2013).

He is a member of the Authors Guild, National Book Critics Circle, PEN Center USA West (for which he served three terms as president and currently serves as a member of the Board of Advisors), the Los Angeles Institute for the Humanities, the Los Angeles Copyright Society (on whose Board of Trustees he formerly served), the Los Angeles Intellectual Property Association, and the Intellectual Property Sections of the California State Bar and the Los Angeles County Bar Association.

Kirsch was born in Los Angeles in 1949, attended high school in Culver City, and completed a Bachelor of Arts degree at the Santa Cruz campus of the University of California, where he was award honors in Russian and Jewish history and Adlai E. Stevenson College honors. A member of the California State Bar since 1976, he earned a Juris Doctor degree cum laude at Loyola University School of Law, where he served as Teaching Fellow in legal communications.

Before embarking on the practice of law, Kirsch was senior editor of California Magazine (formerly New West Magazine), where he specialized in coverage of law, government and politics. Previously, he worked as West Coast correspondent for Newsweek, an editor for West and Home magazines at the Los Angeles Times, and a reporter for the Santa Cruz Sentinel. As a freelance writer, he has contributed to California Lawyer, Los Angeles Lawyer, New West, Los Angeles Magazine, New Republic, Publishers Weekly, Performing Arts, Human Behavior, L.A. Architect and other publications. He is also the author of two novels, Bad Moon Rising (New American Library, 1977) and Lovers in a Winter Circle (New American Library, 1978).

Please note that the California State Bar does not certify attorneys as specialists in Kirsch’s area of practice.

Kirsch is married to Ann Benjamin Kirsch, Psy.D., a family therapist in private practice in Beverly Hills.

CONTRACTS, VETTING,
COPYRIGHTS, TRADEMARKS
AND OTHER INTELLECTUAL PROPERTY MATTERS

Thank you for contacting the Law Offices of Jonathan Kirsch in connection with various copyright, trademark and other intellectual property matters. If you decide to retain our firm to assist you, we can provide assistance on all of the following matters. Please be sure to let us know if you require any of the following specific services. To make sure we are doing everything you are expecting us to do, we encourage you to confirm all requests by fax, email or letter.

CONTRACTS

We represent our clients in the negotiation and drafting of contracts of all kinds for copyright, trademark and other intellectual property matters, both for book, audio, electronic and video publishing industry transactions and other business transactions in which intellectual property assets are being bought, sold, licensed, optioned or cleared for use. Typical contract matters include author-publisher and artist-publisher transactions, agency representation, printing and distribution, foreign rights, life story rights, rights and permissions and other clearance matters, releases, motion picture and television options, non-disclosure and non-competition documents, and purchase-and-sale transactions.

REGISTRATION AND LICENSING
OF COPYRIGHTS AND TRADEMARKS

Our practice focuses on copyright and trademark registration and licensing, both for publishing industry clients and for businesses of all kinds. (See below for additional details on copyright and trademark matters.)

MANUSCRIPT VETTING

We offer the service of “vetting” manuscripts, that is, the review of manuscripts to identify and reduce the risk of legal claims such as copyright and trademark infringement, libel, invasion of privacy, and misappropriation of “name, image and likeness” rights. Typically, we review and comment on manuscripts during the writing and editing stage and advise on recommended changes prior to publication, and we prepare opinion letters in support of applications for media risks insurance.

COPYRIGHTS

Collaboration and Co-Authorship Agreements. If more than one person participates in the creation of a work of authorship, we recommend that the multiple authors enter into an appropriate collaboration or co-authorship agreement, and we can assist you in drafting an appropriate document to identify the rights and duties of the various participants. Acquisition of Rights in Art and Editorial Elements. It is important to acquire the rights you need to use the work product of individuals and companies that provide you with art and editorial elements and other products and services. We can assist you in drafting documents that will confirm what use you are entitled to make of the work of artists, illustrators, photographers, designers, editors, and others who provide such products and services. Ideally, the document should be drafted and signed before the work is commenced.

Registration of Copyrights. We can assist you in applying for registration of copyright in the United States Copyright Office. Important and sometimes crucial legal protection is bestowed upon copyright owners who register their works of authorship within 90 days of first publication, and we strongly encourage you to do so, whether or not you call on us for assistance. Please bear in mind that mailing to yourself a copy of a work of authorship and/or depositing with the Writer’s Guild of America is not equivalent to registration in the Copyright Office.

Copyright Notices. The use of a proper copyright notice bestows important legal benefits on the copyright owner. We can assist you in drafting an appropriate notice and advise on where the notice should appear for maximum legal effect.

Copyright Searches. We can assist you in securing specialized searches to determine the status of an existing work, whether or not it has been published. A search may disclose prior registrations, renewals and assignments, and the information may be crucial in determining whether a work is still protected under copyright and, if so, who owns and controls the copyright.

Copyright Registration. Some works of authorship that were registered in the Copyright Office may still require the filing of appropriate renewal documents. If you own or seek to own a work that is subject to renewal, please let us know.

Revival of Copyright in Public Domain Works. Copyright in some works that were formerly in the public domain may have been “revived” under new international copyright treaties. We can assist you in confirming the copyright status of works that you believe to be in the public domain.

TRADEMARKS

Clearance of Trademarks. We strongly recommend that you authorize us to conduct a trademark search before adopting, using and/or applying for registration of a trademark.

“Rule-Out” Search. We can perform a federal “rule-out” search for word marks only by using the Trademark Electronic Search System (TESS) of the United States Patent and Trademark Office. This is a preliminary search that is intended to determine if there is a pending application or completed registration in the PTO database for mark that appears to be confusingly similar to your mark. If so, you may decide to “rule out” the mark. Even if we do not detect a “rule-out,” however, we strongly recommend that you authorize us to conduct a comprehensive search as described below.

No “Rule-Out” Searches for Design Marks. We are unable to perform “rule-out” searches for design marks by using TESS. Only a comprehensive search as described below will allow us to search for a confusingly similar design mark.

Comprehensive Trademark Search. We strongly recommend a comprehensive trademark search by a professional search service before adopting, using and/or apply for registration of a trademark, whether it is a word mark or a design mark. As a general matter, we use Thomson CompuMark, a copyright and trademark research search based in Boston and Washington, D.C. The advantages of a search by Thomson CompuMark or a comparable firm are that much larger and more up-to-date databases are searched, including federal, state, “common law” and Internet-related databases, and the professional analysts are able to formulate and apply much more subtle and sophisticated search strategies than the ones available to us through TESS.

Design and Use of Marks. We also recommend that you consult us during the development and design process so that we can advise you on various factors that may affect your ability to register and enforce your marks. For example, the appearance and placement of a mark may determine whether or not it is entitled to legal protection as a trademark. Ideally, you will give us the opportunity to work with you and your copywriters and designers at an early stage, and we will review and comment on the way you propose to use your trademarks on the products themselves and the packaging, labeling, advertising, and signage for the products and services before they are actually put into use.

Ownership of Rights in Trademark Elements. It is very important that the owner of a trademark also own all rights in the underlying trademark elements, including words, phrases, images, graphic design, etc. We recommend that you obtain a signed work-for-hire agreement from each person who participates in the process of creating your trademarks prior to undertaking and completing the creation of your trademarks. We will be pleased to review and comment upon the written agreements that you have obtained or, if you prefer, to draft appropriate agreements for you.

Trademark Notices and Symbols. We encourage you to consult us on the proper use of trademark notices and symbols in connection with your marks. To advise you on the proper formulation and use of a trademark notice, we will need to review your marks and the ways you propose to use them. However, as a fundamental matter, the statutory trademark symbol ® must not be used unless and until you have actually received a Certificate of Registration from the United States Patent and Trademark Office (PTO). The fact that you have applied for federal registration does not entitle you to use the statutory symbol, nor does the fact that you have obtained one or more state trademark registrations. Prior to federal registration, however, you may use the ™ symbol as long as you are making a good-faith claim of ownership of trademark.

Watch Services. We recommend that you authorize us to put a “watch service” in place to assist us in monitoring trademark filings in the United States and elsewhere around the world to determine whether confusingly similar marks are being used or registered. We generally use Thomson & Thomson for this service, although other “watch services” are available.

Costs. Services provided by Thomson & Thomson and other search and watch services, the services provided by trademark illustrators, and filing fees paid to the PTO are billed separately from the fees and costs for legal services provided by the Law Offices of Jonathan Kirsch. The amount of these fees will depend on the number and kind of marks and the number of goods and services that are being searched, watched or filed. We will provide you with specific information once we have consulted with you about the trademarks you are seeking to protect. We ask our clients to advance the fees payable to third parties by putting money on deposit in trust or by issuing checks payable to third parties and providing the checks to us for transmittal to the vendors or the PTO.

Federal Trademark Registration. We handle all aspects of the preparation, filing, and prosecution of federal trademark and service mark applications in the PTO and the maintenance of registered trademarks once a federal registration has been achieved.

A mark that is used on goods is generally called a trademark, and a mark that is used in connection with services is generally called a service mark. As used below, however, “trademark” refers to both kinds of marks.

Federal trademark applications may be filed on an “actual use” basis if the mark is being used in interstate commerce. Applications may be filed on an “intent to use” basis if a mark is not yet in actual use.

Applications may be filed for word marks (that is, marks that consist of words only in no particular lettering style) and design marks (that is, marks that include a particular lettering style or other design elements). In some cases, the words that appear in a trademark can be registered as a word mark and the trademark in its entirety can be registered as a design mark.

Trademark applications and registrations must specify the particular goods and services in connection with which the mark is (or will be) used. Each category of goods and services requires the payment of a separate application fee.

Please bear in mind that registration of a mark for which an application has been filed is not automatic. Applications are assigned to an Examining Attorney in the PTO, and it may be necessary to respond to various technical issues or refusals to register as raised by the Examining Attorney.

If and when approved for registration by the Examining Attorney, a mark is “published for opposition.” If an opposition is filed by someone who objects to the registration of the mark, it is necessary to litigate the issue in the Trademark Trial and Appeal Board. However, only a very small percentage of trademarks are opposed.

Once a mark is successfully registered, it is necessary to file additional papers to maintain the registration in full force and effect and to renew the registration.

State Trademark Registration. We generally assist in our clients in apply for trademark registration services at the federal level, which affords legal protection in all 50 states. However, it is also possible to register trademarks at the state level. If you wish us to assist in applying for registration of your trademarks in one or more states, please let us know. International Trademark Protection. All of these comments apply generally to the registration and use of trademarks in the United States. We are also able to assist you in obtaining international trademark protection, either by engaging trademark attorneys on your behalf in various regions (such as the European Union) and/or specific countries, or by filing international trademark applications in the PTO under the so-called Madrid Protocol. Please let us know if you wish us to provide more information on international trademark protection.

FICTITIOUS BUSINESS NAME STATEMENTS

Under many circumstances, it will be necessary for you or your company to file and maintain one or more fictitious business name statements, which are more commonly called “DBAs.” Although a “DBA” and a trademark may be similar or even identical, the filing of a Fictitious Business Name Statement does not take the place of an application for trademark registration. Please let us know if you need our assistance in determining whether a “DBA” should be filed and, if so, whether you wish us to handle the filing.

TRADE SECRETS

Some ideas and information that are not readily protected under copyright and trademark may be protected as “trade secrets.” However, the protection of trade secrets requires careful attention to the way such ideas and information are used and disclosed, and it is important to secure signed non-disclosure and non-competition agreements from anyone who is granted access to trade secrets. Please let us know if you need assistance in designing a program for protection of trade secrets, including the drafting of appropriate confidentiality agreements.

PATENTS

We do not handle patents, but we work with patent attorneys to coordinate the protection of intellectual property rights. Please let us know if you are already working with patent attorneys or if you wish us to refer you to patent attorneys.

INSURANCE

Many of the legal risks that arise in publishing or other uses of intellectual property — such as claims for copyright, trademark and patent infringement, defamation, invasion of privacy, misappropriation of name, image and likeness, and misappropriation of trade secrets — are not covered by conventional business insurance. We strongly recommend that our clients consider applying for additional insurance coverage to cover these risks. We can assist you in evaluating whether you are already covered and, if not, in applying for the additional coverage that may be available.

PLEASE CONTACT US

Please feel free to contact us if you have any questions about any of these important points.

As noted above, we strongly encourage our clients to confirm in writing all of the work that they are expecting from us to avoid any misunderstandings about which tasks they are counting on us to complete.

Please note that this memorandum does not create an attorney-client relationship with Jonathan Kirsch and/or the Law Offices of Jonathan Kirsch We ask that you sign a formal engagement letter to confirm that you have retained us to represent you and/or your company, and until then, no attorney-client relationship exists between us.

We represent clients throughout the United States and in various countries. However, all legal services are rendered at our offices in California, and neither Mr. Kirsch nor any of his colleagues are admitted to the practice of law in states other than California. Please note that that the California State Bar does not certify attorneys as specialists in our areas of practice.

Thank you for contacting the Law Offices of Jonathan Kirsch.