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October 1, 2011 Registering Expressive Material for Copyright Protection; Or, Foregoing Registration of Writings Offered for Publication on the Internet Strings of effectively arranged letters, words, phrases, clauses and sentences are the essence of expression. They are owned by the author who creates them and protected by copyright law, although infringements are not actionable unless the work is registered with the Copyright Office. If an author includes in his work expressive material owned by others he or she must carve out in the copyright application what is not to be included in the certificate. This requirement applies whether or not the author has been granted permission to use the expressive material. A copyright application asks the applicant to state under oath the specific content both included and excluded for registration. The Copyright Office defines material to be excluded as "preexisting material", as follows:
The Application lists four categories for exclusion, "Text," "Artwork," Photographs," and "Computer Program." There is also a blank field for "Other" which can be used to more specifically particularize what is being either excluded and included for copyright registration. Rights to control copying of unpublished material was the principal issue in a Salinger lawsuit concerning the use of the most interesting quotations from letters in an unauthorized biography of the author. "Salinger" held the Court, "has a right to protect the expressive content of his unpublished writings for the term of his copy-right, and that right prevails over a claim of fair use under 'ordinary circumstances'," Salinger V. Random House, Inc., 811 F.2d 90 (2nd Cir. 1987). What applies to longer works is equally true of shorter. Whether to register, however, may depend on the occasion for the publication and value of the expressive material. Ephemeral and generic musings pass in a blink. There is a line of cases that hold that expressive material may even extend to short phrases if the "sequence of thoughts, choice of words, emphasis, and arrangement ... satisf[ies] the minimal threshold of required creativity." The "minimal threshold of required creativity" is a high standard. Nevertheless, online anthologists and aggregators who accept this material have the right to register their journals as compilations, but depending on the terms of license (exclusive or non exclusive) have no control over an author's future use of his or her work. Separately, authors are entitled to register their own journalistic or occasional pieces and exploit them as they will. However, the question with these pieces written mainly for Internet consumption is whether copying is not unwelcome to their authors, because it denotes recognition which in turn preludes attention, which in turn creates an opportunity, which in turn.... (Who knows what?) Writing for attention, though, is not without bumps. In a recent contract involving contributions to a website "journal" a website publisher agreed to accept articles on a non-exclusive basis (which is fine), but its contract provided that "[i]f you choose to republish your articles, you MUST publish them either with a NoIndex HTML tag or as an image file" (which is not so fine because although it appears not to restrict it limits the author's ability to reach audiences other than the publisher's). Other website "journals" simply offer a forum for writers in particular disciplines with or without fee for the prestige of having a piece accepted for publication. In clicking "accept", though, at least pay attention to the terms and who will own the published piece.
September 24, 2011 The Dead Are Beyond Suing; Be Wary the Living One should be careful in revisiting the past, not for invading a deceased’s privacy or injuring his or her reputation – since the dead cannot and the living are barred from pursuing the deceased’s legal claims – but for writing about the still living who were present in the deceased’s past. Not an infrequent question is, What should not be said? Part of the answer lies in the genre, whether the writing is a memoir or a work of reportage. You can disclose about the dead what you personally experienced and what others have said about him or her. You cannot – without risking legal exposure – disclose without permission facts of a personal nature that have not otherwise been publicly disclosed about any living person learned third-hand. Statements that cast the living in a false light or disclose private information expose an author to potential liability for invasion or privacy and defamation. The Wisconsin privacy statute, for example, defines invasion of privacy as any of the following:
Other States have different models of legislation, but the Wisconsin statute captures the essence of the tort in those States that recognize a similar privacy right. New York does not recognize a common law right of privacy, but an aggrieved plaintiff has a privacy cause of action for exploiting for commercial gain any living person's “name, portrait or picture” for advertising or trade purposes “without having first obtained the written consent of such person, or if a minor of his or her parent or guardian.” Under California’s Constitution “the right of privacy protects the individual's reasonable expectation of privacy against a serious invasion.” A New Jersey case from the mid-1980's, Fasching v. Kallinger, 211 N.J. Super. 26 (1986) is informative on these issues. The author and her publisher (among other defendants) were sued by a murdered victim’s family for both invasion of privacy and defamation. The book is a study of the murderer’s life course, his descent into a personal hallucinatory “Hell” and ultimately to the murders for which he was convicted. The trial court concluded and the appellate court affirmed that the right of privacy dies with the victim. “The right of privacy [the court held] is a personal right and cannot, as a general rule, be asserted by anyone other than the person whose privacy is invaded.” This precludes recovery by surviving relatives for publicity concerning a deceased person. The rule is the same with defamation. The trial court in Fasching explained that “where the decedent is alleged to have been defamed, an action for defamation is personal.” The Judge continued, “[o]ne who publishes defamatory material concerning a deceased person is not liable either to the estate of the person or to his decedents or relatives.” Under common law even an action for defamation brought while the plaintiff was alive would not have survived death. Current survival statutes now authorize a decedent’s representative to pursue claims accruing during his lifetime. So, what is a memoir author to do? Do not worry over the dead, clearly be prudent in the identification of actors and selection of incidents, careful in the manner in which you represent your subjects and circumspect in what you disclose about the living. September 16, 2011 Fair Use is a Statutory Privilege, Not a License The U.S. Supreme Court has described fair use as "a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent." The question often put is, How much can the taker use without violating an author's copyright? The answer is, No more than is considered fair. The fair use defense "permits courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster," Iowa State Univ. Research Found., Inc. v. American Broadcasting Cos., 621 F.2d 57, 60 (2d Cir. 1980). What is considered fair is measured in part by the taker's status (a journalist, teacher, citizen) and his or her purpose in using another's expressive content. The Copyright Act identifies six examples of purpose for taking (the statute uses the phrase "such as"), namely "criticism, comment, news reporting, teaching, scholarship, or research." If any such be the purpose, then the taking is assessed by considering
Takings for criticism and comment which may also raise First Amendment issues include creating "new ideas out of the old," effectively transforming the old into something new. Parody would be an example that qualifies as fair use under a transformative use defense as may combinatory or reimagined works, although they would not be "presumptively fair." In other words, the taking would still have to be judged on a "case by case" basis, Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 581 (1994), but parody "has an obvious claim to transformative value" and can therefore constitute fair use. The Court continued that it "would not be fair use if the purpose of the borrowing were to avoid the drudgery in working up something fresh." In lay language we would call this plagiarism and when noted publicly has resulted in works being withdrawn from the market and pulped. Other cases have established that copying verbatim from a copyrighted work weighs heavily against a finding of fair use. A recent case in New York pitted the publisher and author against a blogger who posted 21 pages of a book that it claimed were "leaked excerpts." The U.S. Supreme Court held in Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 565 (1985) that reproducing portions of a copyrighted work verbatim is evidence of the qualitative value of the copied material and works against a finding of fair use. These cases generally involve significant takings of which a recent example is Salinger V. Colting, 641 F. Supp.2d 250, 256 (S.D.N.Y. 2009), affirmed 607 F.3d 68, 80 (2d Cir. 2010) . The above cases, though, are in the magna category, sufficient to justify the cost of commencing an infringement of copyright action. They are large takings. Not surprisingly, there are few cases of small takings that hover on the boundary of fair use so there is no guidance on quantity of taking to be fair. There is no mathematical formula only a rule of thumb. For this reason, an author may expect that if her work is being considered for publication by a publisher and not self-published the editor will insist on her obtaining permission for lengthy quotations ("lengthy" in relation to the whole) that may cross the boundary of fair to unfair use. September 9, 2011 Damages and Penalties for Copyright Infringement The Copyright Act has teeth. It protects the integrity of an author's work by granting the copyright holder certain exclusive rights in both her original and derivative works. This means the author controls who may do what to her work. For example, without a license from the author no one can prepare a theatrical reading or performance based on a memoir. To do so is a copyright infringement for which the infringer is liable in damages, penalties and attorney's fees. (I am not speaking here about fair use, to be discussed in the next Note.) These principles have been affirmed in a number of recent cases: a District Court case in New York parsing the issue of copyrightability for a parody; a decision of the United States Court of Appeals for the Third Circuit in New Jersey involving a clipped photograph; and a recent appellate case from the 1st Circuit. In this Note I will focus on the 1st Circuit decision, Spooner v. Een, 10-2393 (1st Cir. 7-5-2011) because it exemplifies a situation in which the alleged infringer pushes back. Where the infringement is clear, pushing back has enormous consequences on the award of attorney's fees. In Spooner, the infringement occurred when the defendants included a song composed, copyrighted, and performed by the plaintiff in a commercial advertisement prepared for television and internet display. The author had not authorized use of the work. With tongue in cheek, the Court stated that "[i]t would serve no useful purpose to recite book and verse. It suffices to say that the parties engaged in frenetic motions practice, conducted extensive discovery, and squabbled over a plethora of issues (large and small)." It should not come as a surprise that copyright litigation is not inexpensive. One of the defendants settled and the other went to trial, and suffered the consequences of its rashness. The Court noted drolly:
The case came to the 1st Circuit Court of Appeals on the issue of attorney's fees. The defendant argued that the "request was so exorbitant that it warranted an outright denial of fees." The district court elected "not to go down that road" and neither did the appellate court. However little the award of damages, if the defendant insists on playing hardball it will pay the piper. The Court rejected the argument that there must be some proportionality in awarding attorney's fees. Not necessarily so, held the Court:
The reason for holding to this position is that "a strict proportionality requirement would overlook entirely the value of other important litigation goals. That kind of rigidity would frustrate the core purpose that underlies many fee-shifting statutes, which are designed to afford private parties the opportunity to vindicate rights that serve some broad public good." The "broad public good" of course is the right of authors to enjoy the fruits of their labors. August 2, 2011 Registrations of Intellectual Property and Rights of Ownership A. Copyright Copyright protects any original work of authorship that is in tangible form, regardless of whether or not there is a notice of copyright on the work. Original expressions may include literature, musical works, paintings, sculpture, audiovisual works, sound recordings, or architectural works. Tangible form may include anything written on paper, saved to disk(web pages, graphics on web, electronic mail messages or computer programs), or saved on any audio/video device. There are, however, several fundamental categories that are not eligible for copyright protection: ideas, facts, titles, names, procedures, and works not fixed in tangible form. Copyright only protects the form in which these ideas or facts are expressed, not the ideas or facts themselves. The original expression becomes protected by copyright as soon as it is in tangible form. Once an original expression exists in a tangible form, that expression is protected by copyright. The length of protection varies depending on when the copyrightable material was created. The Copyright Law changed in 1978. If the copyrightable material was created: * Before 1978: It is protected for 75 years, beginning on the date of publication. The creator owns the copyright unless he or she creates the work for someone else (possibly the institution they work for). In the case of creating for someone else (a principal), the principal owns the copyright. This situation is also known as "work made for hire." Copyright protection automatically attaches to your original work, so what are the advantages of registering a work? There are two reasons to register: 1. You must have a copyright registration before an infringement suit can be filed in federal court; and * A completed application form which can be prepared and submitted online. B. Trademark Is registration of a trademark required? No. You can establish rights in a mark based on legitimate use of the mark over time. However, owning a federal trademark registration on the Principal Register provides several advantages: You may use the federal registration symbol "®" only after the USPTO actually registers a mark, and not while an application is pending. Also, you may use the registration symbol with the mark only on or in connection with the goods and/or services listed in the federal trademark registration. "TM" can be used pending registration but it should not appear on the specimen submitted as proof that you are offering goods or services in commerce. An application for trademark may be filed in anticipation that the goods or services will be offered in commerce. This is known as an "intent to use" application. To avoid abandonment, you must convert the intent to use application to "use in commerce" within 36 months from the Notice of Allowance. Domain names can be registered as a trademark. However, the act of registering a domain name does not give rise to a trademark and as a general rule has no priority over a preexisting (registered or unregistered) trademarks. A domain name registrant is not protected from a claim that its choice of domain name infringes a trademark holder's rights. * A USPTO application form can be completed online. July 6, 2011 Clearing Permissions to Use Photographic Images I recently reviewed the manuscript of a non-fiction, semi-scholarly work analyzing images of historical prophesy (tarot) cards. The author explained that she wanted to illustrate her book with copies of cards and photographs of ancient artifacts to demonstrate thematic links to the images on the cards. The cards are mostly of ancient provenance, although some are more recently created modern interpretations of prophetic images. Whether ancient or modern, the art and artifacts are owned by museums and cultural institutions which control rights to their collections. What permission does an author need to use images of cards and photographs of ancient artifacts from cultural collections? More recently created cards are works of art clearly protected by copyright. Not so with ancient cards and works of art. In one sense these are in the public domain, but they are nevertheless protected by ownership rights against commercial exploitation. Can you copy images from a catalogue or a magazine or newspaper to illustrate your book without having to pay anyone? With respect to artifacts in cultural collections, the author explained that she had found photographs on the Internet which she intended to download and use in her book. She had also (despite ubiquitous "no photographing" admonitions in cultural institutions) taken photographs of museum holdings on the sly with a digital camera and questioned whether there are constraints against using these images. Images are not for the taking even if not protected by copyright. For example, although an author may use her own unauthorized photographs their low resolution makes them unsuitable for publication. Publishers require high resolution prints which can only be obtained from the museums and cultural institutions which own the originals. In these circumstances permission is granted in exchange for a fee under an agreement that spells out limitations of use. Optimally for the creator of a semi- or even scholarly book a "use fee" may be no more than the cost to the institution of creating a reproducible high definition image. The amount of the fee is variable and depends upon the nature of the book, its intended audience and the territories in which it will be sold. It may also depend on the location of the image in the book – cover art is likely to be more expensive than the same art on an interior page – and size (larger images cost more). In order not to be liable for violation of a third party's intellectual property or contract rights a publisher will demand a contractual warranty from the author that all permissions have been cleared. Most publishers will require the author to clear permissions, which is time consuming and sometimes costly. Publishers do not ordinarily agree to pay permissions fees. Most likely the cost will be borne by the author and paid out of the advance. Publishers may agree to share in the cost of obtaining new illustrations, which necessarily involves contracts with illustrators and photographers and raises other issues of copyright ownership. June 15, 2011 Work Made for Hire, Copyright Ownership and Assignment The copyright of a work produced by an employee in the course of her employment is owned by her employer. The copyright of a work produced by an independent contractor is either owned by her or, if it is a work made for hire, it is owned by the contracting party. For a work to be a "work made for hire," it must fall into one of the narrow categories enumerated in the Copyright Act, namely
In addition, the parties must "expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." Since poetry, memoirs and novels as well as works of criticism and scholarship are not on this short list they can never be works made for hire. Rights to exploit such works can be licensed and the copyrights can be sold, but at their inception they are owned by the creators. Typically, if there is any question whether a work is made for hire – let's say the work is ghostwritten – the contracting party will require the writer to execute a work made for hire agreement and an assignment of copyright. Once a copyright is assigned the writer has no further ownership interest. More importantly, if the contracting party defaults on its obligations under the contract the writer has a contract claim but cannot reclaim the copyright. These general principles of work made for hire come to life in a recent federal district court case in the Southern District of Florida, Hermosilla v. The Coca-Cola Company, 10-civ-21418 (February 23, 2011). Coca-Cola hired the plaintiff to adapt a song to include a verse of Spanish language lyrics for a marketing campaign. Providing lyrics is not a work made for hire, but in an exchange of telephone calls and email messages Mr. Hermosilla agreed to a proposal from the Vice President of Marketing that he receive credit for the work in exchange for an assignment. He stated in his email: "For the adaptation, you may consider it a work for hire with no economic compensation to that respect." As a matter of law, receiving credit for a work is deemed adequate consideration to support a copyright assignment. The court cited an Indiana state court decision for this proposition. Mr. Hermosilla attempted to withdraw the assignment because the Coca-Cola contract did not provide for him to receive credit, but it was too late. He had already accepted Coca-Cola's offer; and Coca-Cola had accepted his counter offer for "credit." Section 204 of the Copyright Act provides that "(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent." Courts have found that emails constitute signed writings. In a 9th Circuit case, the court held that "Section 204's writing requirement is not unduly burdensome.... The rule is really quite simple.... It doesn't have to be the Magna Charta; a one-line pro forma statement will do." Mr. Hermosilla, however, is not without a remedy, but it cannot be in federal court. The court stated in a footnote that the plaintiff's "remedy for any such violation would be a claim for breach of contract, and no such claim is properly before this court." April 4, 2011 Google Settlement of Digitization of Books Derailed A number of Guild members have asked me about the Google Settlement. Those who opted in saw an opportunity for revenue. Those who did nothing probably did not understand that by letting the deadline pass amounted to an opting out. Opt outers are part of a larger class that includes orphan works whose authors (after a reasonable search) cannot be found. As written, under the Amended Settlement Agreement (ASA) Google stands to gain a significant market advantage for orphan works. The question before Judge Chin (Southern District of New York) was whether the ASA was “fair, adequate and reasonable.” By decision posted on March 22 he concluded that it was not, although he suggested ways in which the ASA could be improved. I quote from the decision:
The decision concludes,
Google is said not to be happy with an “opt in” model and there have been suggestions that as an alternative to settling the case with the Authors Guild it would support an amendment to the Copyright Act to deal with orphan works. Stay tuned. March 14, 2011 Electronic Rights: Verbatim Text Editions and Multimedia Products A number of Legal Corner readers have asked me about the meaning of "electronic rights." "Electronic rights" is shorthand for a basket of rights and multiplicity of products including 1) verbatim text editions delivered through multiple platforms; and 2) non-verbatim multimedia products including interactive educational or entertainment CD-ROMs and DVDs, compilations, and online databases. In a typical Electronic Rights provision the publisher tries to control all rights for an unlimited term. However, because each right in the basket is distinct they should never be granted wholesale. And, if electronic rights are granted individually there should be no ambiguity in the publishing contract as to the extent of the grant and provisions for reversion. Electronic Text Rights are defined in a mainstream publishing contract as
Multimedia Rights are defined as
Publishers expect to receive the rights to publish electronic editions. This is appropriate when they are in a position to exploit them. However, grants of rights in sweeping terms give the publisher control of all the electronic uses of an author's work. A boilerplate contract provision, for example, may require the author to grant the right "to exercise and license (i) the right to reproduce, publish, distribute and sell the full length Work in the English language in a product reproduced in print-on-paper or other physical media." The term "media" is too broad and should not be permitted to creep into a provision describing use of the text in other formats. The rights granted should be limited to reproduction of the verbatim text of the print-on-paper work in an electronic format. The electronic edition should be the entire Work, unaltered and unembellished, unless otherwise expressly set forth in the publishing contract. The provision for electronic editions should not include by default any expansion of the right granted. Advertising and hyperlinking rights should be specifically spelled out if permitted. The maximum number of words for preview on the publisher's or bookseller's website depends on the genre. January 30, 2011 Contracts That Resemble But Are Not Publishing Agreements Traditional publishers produce, distribute and market books at their own expense. Print on demand companies offer editorial, design and publishing services or are printers disguised as publishers. These "publishers" are in the business of fulfilling whatever sales demand the author is able to generate through her own marketing efforts. If you are considering using a non-traditional publisher check first with "Writer Beware" a blogging site I recommend. The bloggers on "Writer Beware" have recently discussed a number of companies to avoid including faux publishers and one in particular who is a defendant in a civil fraud action commenced by the Florida Attorney General. With this caution in mind, I want to look at several specific provisions in a contract from one of the faux publishers a client recently brought to my attention. The contract included the usual boilerplate provisions expected in a publishing contract but also contained a provision that required the Author to make a substantial payment. The provision read as follows:
In other words, the Author agreed to pay the "publisher" $13,830 plus shipping for the privilege of having her Work published. The provision continues on the subject of distribution, a cost in money and time which is also transferred to the author:
The "publisher" is prepared to "negotiate [with the Author] in good faith for a higher discount depending on the number of copies involved." Such an arrangement would only be suitable for authors on the lecture circuit who sell their books to audiences or over the Internet, but $9.22 per copy probably represents a significant markup over the actual cost of printing and binding. What this Author signed was not a publishing contract but a printing contract. The author is required to purchase books in bulk thereby relieving the "publisher" from printing at any one time more copies than the Author orders. The royalty schedule which appears typical for the kind of work involved is actually illusory since the only income (if any) is to come from the Author's own efforts. There is difficulty in terminating this type of contract because as a so-called publishing contract it grants exclusive rights. One possibility, successful in this particular case, was to put the "publisher" on notice under the termination provision which contained a definition of "in print." A book available only on demand is not "for sale in at least one U.S. edition" as that term is understood in the publishing industry. The "publisher" agreed, the contract was mutually terminated and all rights were reverted to the author. January 8, 2011 Memoir and Truth Publishers care about the genre of the works they agree to publish. What is being licensed (what the author/licensor is granting) is spelled out in an opening provision of the contract and is a material term. How does this apply to memoir? We think of a memoir as an exposition of the author's life experiences. What difference does it make if the represented facts stray from literal truth or are outright lies? James Frey, author of A Million Little Pieces, after being exposed for parlaying false facts said that he stood "by the book as being the essential truth of my life." However, a memoir is supposed to be a truthful representation. It is not a vehicle for fictional experiences. Representing the "essential truth" of one's life experiences by misrepresenting the literal facts is unacceptable to publishers and readers. The antidote to Frey's combination of factual truth and fictitious episodes is a narrative that uses metaphor to convey emotional truth but does not contain "false facts." Representation and warranty provisions are standard in publishing contracts. Over the past few years the traditional focus on defamation, invasion of privacy and copyright infringement has been expanded to include a new representation and warranty relating to the truth of the narrative. The intention is to assure the publisher that there are no materially false statements that may expose the publisher to any liability and to restrain the author from misrepresenting herself. A major publisher's contract requires the author to:
This provision requires the author to affirm that the work presented as a memoir is what it purports to be. The publisher will not offer a book to the public as a memoir if it belongs in another genre. The author's promise to be truthful assures the publisher that it will not be commercially damaged by making a misrepresentation to purchasers and readers of the work. We can think of memoir and truth as a continuum ranging from factual accuracy through metaphor and emotional truth to falsity. By calling her work a memoir the author is representing to the publisher and making a statement to the reader that she is telling the truth about herself. Falsity, which includes distortion and exaggeration, is incompatible with the goals of memoir and, as with Frey, may have contractual consequences. November 17, 2010 Literary Agency Agreements A literary agent acts as an author's sole and exclusive representative in selling her work to a publisher. She has contacts in the publishing industry and usually specializes in particular genres. The standard agent's commission is 15%. Ths commission typically rises to 25% on sales of foreign rights through overseas agents, who receive the additional 10%, and on sales of performing rights (motion picture, dramatic, radio and television) when they are represented by specialized co-agents, who will also receive 10%. The cautions in my Notes on publishing contracts apply equally to agreements with literary agents. Grant and reservation of rights, single or multiple book representation, subsidiary rights, distribution of royalties, termination and ongoing commissions are among the issues that should be clarified before an author signs an agency agreement. This Note is directed to the type of agency agreement that attempts to unfairly enlarge the scope of the agency and the agent's right to commissions. In one agreement, the agent proposed the following : "After [the agent] has negotiated the sale of any of the rights to the Work, it shall be entitled to its commissions as stated above, regardless of when the sale or sales take place." The "regardless of" and "when" phrases are ambiguous. Commissions are paid from the advance before publication) and from royalties after publication. The agent agreed to delete the provision as her commission was protected by the "agency clause" in the publishing agreement which provides that all monies earned by the author are paid directly to the agent. The agent deducts her commission and expenses from the proceeds and remits the rest to the author within a stipulated period of time (usually not more than ten to fifteen business days). With regard to termination the agency agreement should state clearly what the mechanism is and what rights survive. In Peter Lampack Agency, Inc. v. Grimes decided in October 2010, the literary agent claimed he was entitled to commissions on a work published after termination of the agency agreement because the publishing contract he negotiated for the author contained an option provision. The court ruled that since the option work came into existence only after termination of the agency agreement the agent was not entitled to any portion of the author's proceeds from contracts negotiated by a subsequent agent.
October 27, 2010 Contract Provisions: The Out of Print and Reversion of Rights Clause Most publishing contracts provide for both the establishment of the author/publisher relationship and its termination. Why should an author be concerned with the “out of print” clause if it rings the death knell of the book with that publisher? As I noted in “Publishing Contracts: Grant and Reservation of Rights” the author usually grants rights to the publisher for the “full term of copyright plus renewals and extensions.” The current term of copyright is life of the author plus 70 years, which is a long time. [More about the author’s death and next of kin rights will be discussed in a later Note.] Most books, however, do not have a long shelf life. If your book is no longer selling in the market in which the Publisher has exclusive rights you will certainty want to invoke a provision in the contract to regain the rights granted. The “out of print” clause usually includes a “reversion of rights” provision, but it is not self-executing. The author must demand the reversion by giving notice. What does it mean that a book is “out of print”? Is a book in print only if there are warehoused copies available for sale? What if the book is available for electronic download to a digital reader but there are no print copies for sale? A typical contract provision reads
Whether a Work is “available for sale” or in “regular sales channels” [a) and b)] is too indefinite. What if there is 1 copy “available for sale” or 2 copies in “regular sales channels.” The royalty statement may provide the information if it shows the number of copies originally printed and the total number sold, but some copies may have been used for promotion or sold to the author. Subparagraph (c) is satisfactory and standard. For sales of electronic books [d)] it is preferable to require the maximum number of units; one hundred units over a one year period is too small and lengthens the time before the author can send the Reversion Notice. Better for the Author:
For electronic editions: try to negotiate a number larger than 100 copies sold plus “the Work shall not be deemed in print unless at least [a stipulated number of copies] are sold in the previous two successive accounting periods.” October 1, 2010 How Much Can an Author Fairly Take from Another's Work? The U.S. Constitution grants to authors and inventors for “limited times ... the exclusive right to their respective writing and discoveries.” Fair use is an exception to a copyright holder’s right to exclusive use of an original work and works derived from it. The Fair Use privilege is embodied in Section 107 of the Copyright Act. The Prologue to the section states that it is applicable for purposes such as “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” An author who falls into these categories and uses no more copyrighted material than necessary will more likely than not be entitled to assert the privilege. What an author cannot do is take wholesale the substance of another’s work. Although fair use appears broad, the privilege must be earned; that is, when challenged by the copyright holder in a court of law the author has to be prepared to defend what has been taken. There have been a number of recent cases including Salinger v. Colting, 641 F. Supp.2d 250, 256 (S.D.N.Y. 2009), affirmed 607 F.3d 68, 80 (2d Cir. 2010) . in which the defendant wrote a sequel to The Catcher in the Rye. Salinger commenced an action to prevent the distribution of the “sequel” in the United States. Defendant argued that his work came within the statutory defense of fair use. The District Court did not agree that Colting was entitled to assert the defense for Sixty Years Later Coming Through the Rye. In considering whether a taking is a fair use, the Court considers four factors, namely: 1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and 4) the effect of the use upon the potential market for or value of the copyrighted work. Under the first factor, the Court considers the extent to which the new work is “transformative.” The question is “whether the new work merely supersede[s] the objects of the original creation . . . or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning or message.” Successful satires and parodies are examples of transformative works. Colting argued that his work was intended as a parody of Salinger’s novel as well as of Salinger himself. The law holds that “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” The reverse is also true: the less transformative the more the other factors will be significant. The first factor is always critical to the analysis. The District Court held that “[i]t is simply not credible for Defendant Colting to assert now that his primary purpose was to critique Salinger and his persona, while he and his agents’ previous statements regarding the book discuss no such critique, and in fact reference various other purposes behind the book.” Further, with reference to the third factor, “[w]hile some allusion and reference to Catcher would certainly have been necessary for Colting's purpose of critiquing Salinger ... the ratio of the ‘borrowed to the new elements’ in 60 Years is unnecessarily high.” In effect, Colting created a derivative work which is an infringement of Salinger’s copyright in his novel. September 15, 2010 Publishing Contracts: Grant and Reservation of Rights The provisions in a publishing contract (and what is negotiated out or modified) cannot be more important in launching your book and whether it is successfully distributed. The author receives a contract that reflects the publisher’s legal position; not yours. Contracts establish the rights and obligations of the parties and have to be scrutinized carefully. There should be no ambiguity as to either the rights the author is granting or the obligations of the publisher. Provisions that are unclear or appear unfair should be queried and modified or deleted. You may be told by your editor when you attempt to negotiate changes to the publishing contract that the provisions are “standard.” There is no such thing as “standard.” There are provisions that the publisher is either willing or unwilling to modify or delete. My experience is that once publishers send a contract they are interested in the book and are prepared to negotiate the legal and business terms. The grant of rights, which is usually an early provision in the contract, is key. The rights granted and retained are critical to both publisher and author. The publisher wants not only to publish and distribute the book throughout the world for the term of copyright but also to exploit the subsidiary rights. The publishing contract typically provides for the territorial scope of rights and a list of subsidiary rights with the proposed sharing of revenues for those rights. It may be preferable for the author to grant some of these rights and retain others. The publisher should not control the book or receive more than a fair share of the income it generates. The author should be wary about giving away derivative rights and particularly careful about the definition and scope of electronic rights in the contract. Some publishers, for example, are not best equipped to sell translation or performing rights. You should consider granting less and retaining more, particularly for books that have movie, theatrical or merchandising potential. Some publishers, for example, are not best equipped to sell performance rights. Important Negotiation Points 1. The publisher should be equipped to distribute the book in the territory granted |