Legal aspects and copyright
This chapter reviews the fundamental relationship between copyright and publishing, including contracts and licences, piracy and enforcement, among other legal issues. Coverage of the management of rights in the digital age and the ‘orphan works’ question are discussed in depth, alongside publishing agreements, creative commons and other licensing arrangements.
Publishing is a business of rights. Publishers obtain the legal right to distribute the materials they publish through copyright and contracts, and then use copyright and contracts to manage their relationships with those to whom those works are distributed. The legal principles that apply to copyright and contract are implicated at every step of the publishing process, from the moment a work is created through the time it is in the hands of the researcher, scholar, student, librarian or reader for whom it is intended.
Publishers acquire rights through publishing agreements with and copyright transfers from authors. Distribution of digital works is accomplished through contracts such as subscription access or licence agreements. Other sets of rights are provided, by contract, to local distributors, translators and services that authorise certain activities such as internal distribution or document delivery of individual journal articles.1 Legal issues such as copyright, contracts and licences, and piracy and enforcement, are fundamental to the enterprise regardless of whether a publisher is a commercial or non-profit organisation. To maintain this business it is necessary to manage rights properly, including on occasion by enforcing rights when there is unauthorised harmful use being made. This chapter will discuss these issues.
There are other legal issues that are relevant and important to publishers, including trade regulation (involving sales into particular countries where there are trade sanctions, even though there are usually exceptions for published content) and other areas of compliance such as bribery protection, labour and employment concerns, and libel and defamation. The last area is often a concern for authors and editors as well as publishers, and has also intruded into considerations of publishing ethics notes and retractions.2 Concerns have been expressed that libel cases could be used as a tool to interfere with legitimate scientific discussion and inquiry.3We will concentrate, however, on publishing agreements and copyright issues in this chapter. Please note that this chapter is by no means a substitute for experienced legal counsel and so it is strongly recommended that anyone looking to implement or analyse any ideas or concerns mentioned in this chapter further should consult with their own lawyers and attorneys with respect to these issues.
Although publishing and publishers depend on it, there are a surprising number of common misconceptions about copyright in the publishing community. Because of that, a short review of some basic principles may be useful.
Copyright protects the rights of authors of original4 works of authorship and of those to whom authors have licensed or assigned those rights. National laws define the included rights, but those laws are subject to some international norms created by treaties. So although there is no such thing as an ‘international copyright’ it is still possible to make some general statements about what rights and works are covered by copyright.
Copyright protection applies to both published and unpublished works. Although publishers would seem, at first glance, to be concerned only with the first category, the second is of concern as well. Published works often include quotations from or, in the case of images for example, entire copies of other works. Even if those included works were not previously published, they can be protected by a copyright owned by a third party, so their use can have copyright implications.
Copyrights can apply to creative works in various forms, formats and media. Books, articles, photographs and other images, audio-visual works and music, in analog, digital and any other format, can be protected by copyright. There are, however, types of works and aspects of copyrighted works that are not protected by copyright. Most importantly, copyright protects the particular expression of an idea but not the underlying idea itself. Facts and data are not protected by copyright, although the particular presentation of those facts and data (i.e. a journal article reporting on the results of a study) can and typically will be protected. But that presentation has to have some aspects of originality to it. The classic example of an entirely factual work that may not be eligible for copyright protection is a ‘white pages’ telephone list, where the work entirely comprises ‘facts’ (names and associated addresses and phone numbers) and there has been no originality or creativity associated with the selection, organisation or arrangement of those ‘facts’.5
Copyright has a specified duration, tied in most instances to the life of the author plus a period of years (70 in the US and the UK; 50 in some other countries) or in some circumstances from the date of publication (95 years in both the US and the UK). Works for which the term of copyright has expired are in the ‘public domain’ and may be freely used by anyone. Works may also be in the public domain for reasons other than their date of creation or publication. Some works were created under circumstances that prevented copyright from being claimed (as is the case in the US for works created by the federal government), or have lost their copyright protection (as is the case for some works published in the US before 1 January 1978, when the US copyright law was changed to eliminate certain formalities that had been a prerequisite to copyright protection).6
• the right to authorise the creation of works derived or adapted from the original work (e.g. creating a screenplay based on a novel, or a French translation of a work originally published in English); and
The individual rights covered by copyright are a ‘bundle of rights’ that can be licensed separately. So, for example, the copyright owner may license a publisher to distribute copies of a work in print and digital form, but may have the rights granted back to do certain kinds of distribution him/herself (for example, when a professor retains the right to post a copy of an article on his or her own website or in an institutional repository). An author may divide the granted rights geographically (permitting a book publisher to publish a novel only in the US and licensing another publisher to publish the work in the UK), and/or may permit the publisher to publish the text of the work, but retain the right to separately license adaptations or derivative works. It is also important to keep in mind that some jurisdictions (including Germany and France) limit by law the extent to which an author can transfer certain exclusive rights to a publisher or other distributor.7
Exceptions or limitations to these exclusive rights are specified in the applicable national law. These exceptions vary from country to country, but must fall within the international norms that are contained in the relevant multi-lateral treaties. The most important of those treaties is the Berne Convention, which is administered by the World Intellectual Property Organization (WIPO). Berne is the oldest (it dates from 1886, although it has been amended many times since) and most widely accepted international treaty dealing with copyright and currently has more than 160 signatories.
The Berne Convention sets out a ‘three-step test’ (now incorporated into other important treaties and trade agreements) against which exceptions to the exclusive rights of copyright owners must be measured. Exceptions and limitations must relate to ‘certain special cases’, may not ‘conflict with the normal exploitation of the work’ and may not ‘unreasonably prejudice the legitimate interests of the rights holder’.8 The types of exceptions with which scholarly publishers will be most familiar are those that deal with certain educational and library uses. In many countries, including throughout the EU, the exceptions apply to specific circumstances and are designed to support public policy goals (such as news reporting and education) and cultural objectives (for example the promotion of literacy and preservation of history through library and archive privileges). In the US, there are some specific exceptions for uses such as in classroom teaching or in digital distance education, by blind and disabled persons, by libraries and archives, and in other special situations. But there is also the general exception set out in the law for the ‘fair use’ of copyrighted materials for certain purposes.9 The UK’s ‘fair dealing’ exception, although very similar to the US exception including in its common-law heritage, has been applied primarily to the use of quotations for criticism and news. The laws of other EU members do not have the same general ‘fair use’ or ‘fair dealing’ exceptions, but instead include more detailed and specific exceptions for particular uses and users and provide for private copying privileges. The US doctrine of ‘fair use’ has the advantage of flexibility – because it describes the process by which a determination is to be made rather than specifically describing a particular activity, it can be applied to changing circumstances and in situations involving new technologies. However, that advantage is also a weakness, as outcomes under a ‘fair use’ analysis are not always clear and users who rely on it are sometimes disappointed when a court disagrees with their understanding of its application. That lack of certainty can be a drawback in many situations.
In addition to the exceptions and limitations provided in national laws, there are in some circumstances forms of non-voluntary or compulsory licences that provide for the payment of remuneration to the copyright holder. These compulsory licensing schemes are generally seen as a way of addressing a ‘market failure’. These are typically situations in which it is impractical or logistically difficult for the user and the copyright owner to locate each other and engage in an individual transaction with respect to the particular use. Examples include broadcasting, music recording and (in some countries) photocopying. As a way of both managing those statutory licences and handling permissions for certain other uses that do not fall within exceptions or limitations (including photocopying in many countries where no compulsory licence for such copies exists), the collective management of copyrights has become increasingly common. For text materials in particular, there is a well-established structure built around ‘reproduction rights organisations’ (‘RROs’) (sometimes now referred to as ‘collective management organisations’ or ‘CMOs’) pursuant to which creators and publishers, either on a voluntary basis (in the US) or through a legislative mandate (in many other countries) authorise an RRO or CMO to act on their behalf in granting permission and collecting payments for certain uses of their works. As will be discussed below, collective management schemes are particularly relevant when considering the impact of digital technologies on copyright generally and scholarly publishing in particular.
Although the law provides that the copyright owner has the exclusive right to make or authorise the making of copies, unauthorised copying has always been an issue for copyright owners.10 Now that digital technology has made the making and distribution of unlimited numbers of perfect copies simple, seamless and inexpensive, the problems for copyright owners have increased exponentially. But at the same time that digital technology has created problems for rights holders, it has also created enormous opportunities. For some publishers, such as trade publishers seeing the dramatic recent growth in the e-book market, these opportunities have only recently begun to be utilised in a significant way. Others, particularly in the area of scholarly publishing, have been exploring these opportunities for many years and have developed business models and technical infrastructures to help them realise the benefits for themselves and their customers.
The development of digital technology has also had an impact on copyright itself. The law of copyright is generally ‘technology neutral’. In other words, the exclusive rights of the copyright owner apply – in the absence of a specific exception – regardless of the format in which the work was created or in which it is being distributed. This concept is sometimes difficult for users to understand and accept. Technical tools make copying and redistribution so simple that the legal implications of the use of those tools are often misunderstood and even resented. Copyright law has been under pressure to adapt to the changing realities of the digital world.
The WIPO Copyright Treaty (WCT, 1996) was a multilateral, treaty-based approach to this issue.11 It provided, among other things, for computer programs to be protected by copyright as literary works (an approach already taken by many national laws), for the protection of the selection and arrangement of databases (although not for the factual information incorporated into the database), and for the prohibition of both circumvention of technological measures for the protection of works and unauthorised modification of rights management information contained in works. The treaty now has more than 80 signatories including the US and the countries of the EU. It was implemented in the US through the Digital Millennium Copyright Act (DMCA) enacted in 199812 and in the EU through several Directives dealing with software copyright, database protection and anti-circumvention measures.13
The WCT has been controversial. The debate over the perceived tension between existing copyright law and uses of digital technology is contentious and features in current deliberations in the courts as well as in legislatures. The dispute in the US courts over Google’s library scanning project (the Google Books case) is perhaps the most prominent recent example.
In 2004, Google began the ambitious project of creating a massive digital library by scanning the collections of a number of major academic libraries in the US. In 2005, the Association of American Publishers (AAP) and the Authors’ Guild (AG) each sued Google, claiming that Google’s inclusion of copyrighted works in its scanning program without having first acquired permission from the copyright owners of those works was infringing. Google’s defence to these lawsuits was that its actions were protected under the ‘fair use’ doctrine. The parties attempted to settle the dispute by entering into an agreement releasing Google (in exchange for payments to rights holders) from liability for its past activities and authorising future uses by Google (through the use of an extensive licensing and collective management mechanism) of the scanned works. The proposed settlement agreement would, through its use of the ‘class action’ mechanism available under US law, have been binding on many hundreds of thousands of rights holders – from individual authors to large commercial and non-profit entities – from around the world who were not named as parties to the litigation. In March of 2011, Judge Chin, the judge before whom the case is pending, issued an opinion that rejected the proposed settlement agreement. In the opinion, he focused in particular on the forward-looking aspects of the settlement agreement, saying that such extensive future activities could not be authorised in a class action settlement.14 The judge also, in his decision, discussed some of the policy implications of the proposed settlement agreement, which would have authorised Google to make extensive use of many ‘orphan works’ (works still in copyright for which the owners had not come forward or could not be found). The judge expressed his view that certain aspects of the settlement – in particular the treatment of ‘orphan works’ and certain international law issues that had been raised – should be addressed through legislation rather than through judicial approval of a privately negotiated agreement.
The parties in the Google Books case began negotiating a settlement before the court had an opportunity to directly consider the underlying legal issue in the case (that is, whether Google’s scanning and subsequent uses of the scanned copies of the works fell within ‘fair use’). That legal issue remains open and will presumably be addressed in the case if the parties are unable to agree to an amended settlement agreement that is approved by the court. Although a resolution of the ‘fair use’ issue would be of interest and could provide guidance for future uses and users of copyrighted material, the core problem highlighted by the Google Books case is the desire by users of digital technology to make broader use of the copyrighted materials that they can now so easily copy and redistribute. These issues are complicated when, as here, the user wishes to reproduce a huge number of works, including those for which licences may not be obtainable because the copyright owner may not be identifiable or locatable. That is the ‘orphan works’ issue that Judge Chin felt should be addressed by the US Congress rather than the courts.
The US has looked at possible changes to copyright law to address these issues. Orphan works were the subject of a major study completed by the US Copyright Office in 2006; that study resulted in recommended legislation that was introduced in the US Congress in two consecutive terms. The approach taken in that legislation was based on a ‘limitation of liability’ model, and was focused on individual uses (although nothing would have prevented its application in a mass digitisation context). The proposed legislation applied to circumstances in which a good-faith user could not locate the rights holder after conducting a reasonably diligent search and was applied on a case-by-case basis (meaning users could not designate or rely upon permanent orphan status with respect to any work). If the rights holder ultimately emerged, he or she could collect only reasonable compensation (not damages) from the user.
Despite the failure of this attempted legislative solution in the US, interest in the issue has increased. The Google Books litigation, and in particular the court’s rejection of the proposed settlement agreement in part on the basis that the agreement appeared to ‘solve’ the orphan works problem for the benefit of a single commercial entity, has again focused attention on the problem.
Attention is clearly being paid in the EU, where a proposed draft Orphan Works directive was published in May 2011.15 The stated purpose of the draft directive is to ‘create a legal framework to ensure the lawful, cross-border online access to orphan works contained in the online digital libraries or archives of a variety of institutions … when such orphan works are used in pursuance of the public interest mission or such institutions.’ The approach currently proposed in the draft directive has some elements in common with the US approach, but there are important differences as well. Both would require a diligent search be conducted for the owner, but under the proposed EU Directive a determination that a work is an ‘orphan’ would benefit subsequent users; in other words, the work would have ‘orphan status’ unless and until the owner came forward to claim the work. The search would have to be conducted in the country of origin of the work, but the ‘orphan status’ would apply across the EU, permitting cross-border use within the EU of the work. The ‘beneficiaries’ of the proposal are different as well. Under the US proposal, uses could be made of the ‘orphan work’ by either a for-profit or a non-profit entity, so long as the other requirements are met. The EU proposal is directed toward materials ‘contained in public libraries, educational establishments, museums and archives’ along with certain archives devoted to film and broadcasting. The beneficiary institutions may make the orphan works available to the public as long as the institutions’ activities are consistent with their ‘public interest missions’, including preservation, restoration and ‘the provision of cultural and educational access to works contained in their collections’. It is expected that the proposed directive will be submitted for legislative action in autumn 2011.
It is not surprising that libraries are direct beneficiaries of the proposed EU directive on orphan works. Libraries obviously have a critical and important interest in mass digitisation. Libraries served as a convenient source, for Google, of works to be digitised, but the willingness of many major libraries to participate in the Google program was clearly based in those libraries’ view of their own interests and goals. The recent rejection of the class action settlement agreement in the Google Books case, coupled with the judge’s specific call for legislative action, may help renew interest in addressing some of these issues through legislative changes in the library and archive exceptions in US copyright law.
Orphan works were only one of the issues considered by Professor Ian Hargreaves in the recent report he prepared at the request of the British government. Professor Hargreaves was asked to examine whether the current UK copyright regime is interfering with innovation. The report, released in May 2011,16 recommended certain changes be made in UK law, including the creation of a ‘Digital Copyright Exchange’ to facilitate copyright licensing, the enactment of legislation to address ‘orphan works’ and the expansion of copyright exceptions to cover uses such as format shifting and data mining. Clearly, the impetus behind the preparation of the report and the goals of the recommended changes was to adapt copyright law to facilitate the use of digital technologies.
One important area being debated in discussions about copyright law and digital technologies is that of collective licensing, and in particular ‘extended collective licensing’. There are many instances in which a rights holder can directly authorise use of its works through, for example, subscription agreements or individual licences. There are other circumstances in which such direct licensing is unavailable or impractical (for example, if the rights holder is unable to efficiently reach particular users), and RROs can ‘fill the gap’ in those situations. RROs generally act on behalf of their members or constituents, authorising certain third-party uses on behalf of those individuals and entities that they represent. In the US, where collective licensing for text materials is done on an entirely voluntary basis, the Copyright Clearance Center (CCC) can only offer licences for those works for which the copyright owner has given explicit permission. By contrast, the Scandinavian countries use ‘extended collective licensing’, under which an RRO is empowered to represent all works in a defined category when a significant number of rights holders in this category have provided authority to the RRO, even if the RRO has not been given specific authority by the copyright owner with respect to a particular work.17 The owner of a work falling within that category who does not wish to see the work licensed by the RRO would have to specifically ‘opt out’ of the representation. It has been suggested that the introduction of extended collective licensing could address the issue of orphan works. The pros and cons of that suggestion are outside the scope of this chapter, although it should be noted that the drafters of the proposed EU directive on orphan works explicitly chose not to adopt that mechanism for the time being. Nevertheless, given the success shown by collective licensing organisations generally in facilitating the management of rights, there will be undoubtedly be further discussion of the utility of collective rights management, and perhaps of extended collective licensing, in addressing the copyright and licensing issues raised by digital technology.
Publishers sometimes acquire rights from creators by operation of law (for example, the ‘work-for-hire’ doctrine in the US).18 But more typically, publishers acquire rights through assignments (which are, of course, a type of contract), or through the specific form of licence agreement known as a publishing agreement. For academic and professional publishing, there are three categories of publishing agreements, the first dealing with authors (for both journal articles and books), another dealing with editors and the final category dealing with third-party publishing services (i.e. society-owned journals).
The publisher usually designates the law that will apply to the contract, typically the law of the country in which the publisher has its principal office. This choice is significant because national laws differ with respect to such critical issues as an author’s ability to freely transfer rights and enable their enforcement. In some countries, for example France and Germany, only the right to commercially exploit a work may be transferred. In others, such as the UK, rights can be transferred but issues may arise with respect to ‘moral rights’, which must be expressly waived if that is the intention of the parties.19 Differences in national laws also exist with respect to the granting of rights to future technologies. A contract drafted with reference to the law of one country may be able to address these concerns but that structure will not necessarily work if the choice of law is ultimately rejected by a court. For that reason, publishers should consider describing the rights granted as specifically as possible in the agreement.
Author agreements for academic and scholarly journals do not have to deal with the service or delivery aspects that arise for book author agreements (see discussion below), given that authors prepare their first drafts of articles prior to and somewhat independent of the submission process. Journal authors are also highly motivated to respond quickly to peer review and other editing requirements, given the general importance to researchers of speedy publication of their work in reputable journals. Journal author agreements, however, must deal with copyright issues (licence or transfer), and often focus on publishing ethics issues as well given the increasing attention to such matters in the research community. The copyright and rights transfer issues, including whether to include specifically enumerated rights as opposed to general references to copyright transfer and the issues about future technologies, apply to journal author (and editor) agreements in precisely the same fashion as noted below for book author agreements, and the reader should review those sections. Journal agreements will generally deal more specifically with the question of rights retained by or transferred back to the authors, in light of the broader use by authors of their journal articles in scholarly pursuits such as their own teaching. Journal authors generally want to use their articles for teaching purposes, in later compilations of their work and to provide copies to research or teaching colleagues. Publishers generally assess and balance whether these needs conflict with normal publishing and distribution rights, and most agreements do provide for such uses provided they are for the personal use by the authors. Agreements generally also reference and incorporate journal publishing ethics codes of conduct, including conflicts of interest statements, double submission issues, and plagiarism. International organisations dealing with publishing ethics issues are now often referenced or included in journal agreements. Many publishers, for example, have joined COPE (the Committee on Publication Ethics)20 which publishes guidelines and cases and through which some disputes may be mediated, which can be especially useful when the issues require more expertise and experience.
Author and contributor agreements for books and reference works must deal with a number of fundamental issues. These contracts deal with the delivery of services as well as the transfer of rights in the contents. The publisher must be very clear about expectations, the subject matter of the commissioned piece, its contextual connection to and citation of other published works, and potentially painful issues such as remedial steps if the author does not deliver, or does not deliver on time. The publisher has substantial financial risk if a particular book or reference work falls behind schedule, given marketing expectations and production scheduling requirements. Reference work agreements must also deal with long-term ‘franchise’ issues – reference works in core academic subjects can be extended through many editions and many decades, and may actually be prepared by several generations of editors and authors. However, such works often become known by the identity of the original author, and trademark rights may need to be conveyed (concerning the identification of the work with the original author). Agreements must also deal with warranties of originality, adherence to publishing ethics and often with questions about competitive works.
Well-structured book author agreements will include a clear description of the scope or subject matter of the proposed book or reference work, with an extensive description of the content, orientation and audience, in addition to the more operational issues such as the number of words/ pages and language. Schedules must be established for the initial delivery of the manuscript and the speed with which suggested revisions will be considered and provided by the author. Many publishing agreements provide that if revisions are not made in a timely fashion, then the publisher may finalise the revisions, in some cases subtracting any additional costs from author royalty payments. Not all agreements address remedial efforts for complete non-delivery by an author, particularly for new books where the publisher believes there is significant motivation on the part of the author to prepare and submit the initial manuscript, but it may be something for the publisher to consider – should the publisher have a right to terminate, appoint a substitute author, rescind any advance payments or possibly have another form of financial penalty.
The publisher must clarify whether the author or the publisher will be responsible for clearing permissions for previously published third-party information (typically this is about illustrations and charts, although sometimes extensive textual quotations will also be proposed). Authors generally have a more direct relationship with other authors and research colleagues than would the publisher, and may also be in the best position to judge whether a particular illustration is vital to the chapter in the event that that permission proves difficult to clear, or overly expensive. However, the publisher may be in a better position to obtain permissions from other publishers, and may do a more professional and thorough job of clearing permissions and ensuring that electronic rights are properly obtained. As book content is increasingly made available online and through e-book platforms, publishers must ensure that permissions cover electronic distribution. Scholarly publishers should be aware and inform their authors of the STM trade association Permissions Guidelines (see http://www.stm-assoc.org) which provide for certain gratis permissions between member signatories, and mechanisms established for permissions clearances including the CCC’s Rightslink service for clearing permissions (see http://www.copyright.com/content/cc3/en/toolbar/productsAndSolutions/rightslink.html ).
Contributor agreements are generally brief forms which do not have the degree of formality and ‘delivery’ requirements that author agreements will have. Contributor agreements are used for short contributions that make up a larger reference work, which are reviewed by the reference work editors (or for multi-volume reference works, by the volume editor and the overall editor-in-chief). These agreements must nonetheless deal with core issues such as the delivery schedule, subject matter and length, copyright and payment. Contributor agreements often have a flat fee structure as opposed to the royalty arrangements which are more typical for author agreements.
Royalty provisions, which are the principal method for payments to book authors, are typically based on a ‘net sales’ model in academic and professional publishing and therefore contemplate that certain overall costs (usually commissions and other marketing costs) will be deducted before royalty calculations are made. Book author agreements may also contemplate different royalty rates for different types of revenue, for example in dealing with distribution through affiliates, and rights for translation and adaptation. A trend in recent years, however, is towards convergence of royalty rates for these different forms of exploitation. As noted previously, a key issue is the question of repurposed content, where excerpts are used in ways significantly different from the distribution of traditional book content. This has happened for some years in course-pack products, but new products and services are being offered which use sections or one or more chapters of one work along with many other different types of works, excerpts and data. There are several different models to value these different contributions, and indeed some services where the actual fees and payments from consumers are themselves determined ‘on the fly’.
Arguments can be made that simple metrics such as usage should be used as the primary measure for the financial value of the individual sections of the work used in a new bundled product or service, although it may be easier to measure volume. Some authors, however, will insist that the inclusion of excerpts from their work will have a significant impact on the value of the new combined product. Given the uncertainty in this area, and the rapid market developments, some publishers are including language in publishing agreements that gives the publisher the right to allocate revenues ‘in such manner as it reasonably determines is equitable’ while noting that the bases for such determinations may focus on relative value, quantity or usage.
Publishers and authors have a strong common interest in protecting the copyright in their works and recognise that the current online environment presents new risks and challenges, as web sites that encourage the posting of illicit scans and digital copies of popular books proliferate. Publishing agreements need to ensure that all rights in a copyright work that are needed by publishers to support traditional and new digital means of distribution are transferred from or licensed by authors. To publish a book or reference work in all appropriate forms and formats, the publisher should be careful to utilise publishing agreements under which it acquires the following rights, on an exclusive basis:
Journal publishers will generally need the same set of rights.21 An argument can be made that an outright copyright transfer provides all these core publishing and distribution rights (and more) and does not need to be so specifically enumerated. Some jurisdictions, however, are very protective of authors’ rights and it may therefore be sensible to enumerate the rights that are being transferred, even if the publishing agreement also specifically notes a transfer of all rights under copyright. Specifically enumerated rights (and perhaps rights retained or granted back to authors for certain non-competitive uses by authors) may help to eliminate arguments about the scope of rights granted for a particular work. For these reasons it is useful to include language making it clear that the rights transferred or licensed include the rights to ‘all forms, formats and media, now known or hereafter developed’.
Publishing agreements should also provide for the ability on the part of the publisher to enforce copyright, including by bringing litigation if necessary. Publishers and often authors are monitoring online sites where unauthorised e-book files are being posted (or appear to be posted) and are actively demanding that such materials be taken down from the site. Publishers are active in monitoring sites where unauthorised document delivery services are being provided, with particular concerns for services that facilitate deliveries to commercial entities (as these are important markets for direct publisher services).
Many multi-volume reference works involve editors who review, revise and edit the work of individual chapter editors or contributors. Indeed, some reference works will include an overall editor plus individual volume editors for different core subject areas, and the ‘editor-in-chief’ will also review the work of the volume editors in addition to the overall content. These agreements will typically include the delivery service requirements similar to those in book author agreements, but will also describe the editing and review services in some detail. These agreements will often have strict requirements for timely delivery and more ability on the part of the publisher to substitute services in the event of delivery or quality issues. The potential commercial risks in delays to production and distribution of reference works are often significantly higher than for monographs. Although editor agreements are service-oriented contracts, they must nonetheless also include copyright or rights transfer provisions, to ensure that all rights in the final edited work are consolidated with the publisher. Journal editor agreements are service contracts and should identify the services expected by the journal publisher in some detail and with some specificity. A journal’s identity, its aims and scope, its editorial stance and orientation, should be identified. Difficult issues such as duration, renewal and termination (for example, how to define ‘for cause’) must also be addressed. Fees to be paid to editors may also include support for editorial office services. Many journals will have multiple editors (sometimes with an editor-in-chief supervising several regional or deputy editors), and should clarify the hierarchy with some precision. Most journals have editorial advisory boards, and such advisers should be appointed with formal (but short) agreements. As noted, all editor agreements should also address copyright and rights transfer issues. In some cases where a publisher is providing publishing services for a journal-owning entity (often a scientific or medical society which does not have publishing as a core function), the journal owner will not only own the journal title (from a trademark perspective) but will also manage and control the editorial identity of the journal and may be responsible for appointing the editor.
Learned societies that own and manage journals in their fields sometimes look to third parties to produce and distribute their journals, on a service basis. In some cases the third-party professional publisher will be another society and in other cases it will be a commercial publisher. The decisions about whether and how to seek such services are complex and will differ from society to society, but it is a strategy often pursued to take advantage of the professionalism that a larger house can offer and to permit the society to concentrate on more ‘core’ activities. Many such contracts are put out for competitive bids, where publishers will compete in terms of the scope of services to be provided in addition to the financial contributions they are prepared to make to the journal-owning society. There are other arrangements between specialist societies and professional publishers, including ‘sponsorship’ agreements by which a society becomes associated with a journal owned by another society or publisher. We will concentrate on the first example of a society-owned journal produced and managed by a professional publisher.22
Third-party publishing agreements must address core issues such as editorial control and management; distribution and marketing; and the distribution and sharing of financial risk and reward. Clear provisions on term and duration, termination and renewals, are also recommended -the professional publisher will often want a right of first refusal with respect to competing bids for any post-term periods. Most of these agreements note that the society owner sets the aim and scope, is responsible for monitoring the scientific field and changing the editorial policies if appropriate, and often plays the primary role in selecting the Editor-in-Chief (and sometimes other Editorial Board members as well). The professional publisher will want to have some ability to influence the selection and retention of editors, particularly where there might be a performance concern (see discussions above re editor agreements). Highly competitive bidding processes often result in more up-front financial payments for the society owner, as opposed to the more traditional royalty structure (based on ‘net sales’ revenues).
The third-party professional publisher is often looking for clarity and substantial authority concerning the ‘business’ issues of distribution and marketing, and indeed one reason that a society owner may select a particular publisher is such marketing ability. A well-established sales force or process, strong relationships with key subscription agents, and an ability to cover new emerging territories and thus expand the reach of the journal will be key competitive differentiators. A professional publisher with a large journal programme, however, will want to manage that programme in as consistent a fashion as possible (using, for example, the same overall online subscription access agreement), and thus will want to exercise considerable discretion in these areas.
Prior to the advent of digital distribution of text works, scholarly publishers distributed print publications using a well-defined and straightforward business model. Revenues that came from subscription agreements and sales of tangible copies covered the costs of peer review, printing paper and binding, marketing and distribution, and reinvestment in the company. Licensing was largely limited to rights acquisitions and intra-publisher arrangements. Over the last two decades, the importance of print publication has declined and that decline continues. Costs related to peer review and marketing remain, but certain other costs have been replaced or supplemented by those required to maintain a complex technical infrastructure. Revenues still often come from subscription agreements, but those agreements take the form of licensing agreements providing subscribers with access to digital copies maintained in databases. Some publishers have moved away from, or have never adopted, a subscription-based revenue model, but instead cover the costs of publication through other means (like the ‘author pays’ – or more typically the ‘supporting institution pays’ – model) and distribute their works without charge to users. The authors of the materials being published (scholars and researchers) are no longer, in many cases, willing or even able to assign all rights to scholarly publishers, absent an institutional waiver or permission (due to policies adopted at their supporting institutions). Provisions permitting the author to retain the right to include the work (or some version thereof) in, for example, institutional repositories or author-maintained web sites or requiring that articles be made openly available within a fixed period after initial publication are becoming commonplace.
One of the tools increasingly used, in particular by entities using an ‘open access’ publishing model and by individual authors as well, are licence agreements that explicitly permit reuse and redistribution of a work. By far the most widely used of these types of agreements are the various forms of the Creative Commons licence. Creative Commons was founded in 2001 and, according to the organisation’s website,23 an estimated 350 million works had been distributed under Creative Common’s licences by the end of 2009. Creative Commons licences can be and are used for analog works, but their primary, most typical use is in connection with works published online. The creator includes HTML code (generated with the use of a tool available at the Creative Commons web site) with the digital copy of the work that provides notice that the work is being distributed pursuant to a Creative Commons licence and a link to the full text of the licence.
The deployment of a Creative Commons licence is not, as is sometimes mistakenly assumed, the same as a dedication of a work to the public domain.24 To the contrary, the licence can only be used in connection with a work to which copyright ownership is asserted. The copyright owner chooses between several different versions of the Creative Commons licence, all of which permit downstream sharing of the work to which the licence is applied. The least ‘protective’ version requires only that subsequent users of the work provide an attribution to the creator. Other versions add other provisions, such as a prohibition on the creation of derivative works and/or a prohibition of commercial uses and/or a requirement that subsequent users license any works incorporating or derived from the original work on the same terms on which the original work was licensed (a ‘share-alike’ requirement). Creative Commons encourages the use of its licences for copyrighted works in all forms and formats except software, recommending that those wishing to distribute software on a similar basis instead consider using licences obtainable through such sources as the Free Software Foundation and the Open Source Initiative.25
In considering whether to use a Creative Commons licence as part of a publishing programme, or whether to use materials previously distributed under a Creative Commons licence as part of a new work, there are several important considerations to keep in mind. The 10-year history and extensive nature of their use has created a presumption that these licences will probably be enforceable in many jurisdictions.26 By its terms, a Creative Commons licence is not revocable. And, although Creative Commons licences are non-exclusive and require a downstream user to come back to the creator for further permission for uses not covered by the particular licence form (most commonly, perhaps, for permission to make a commercial use of materials licensed for non-commercial use only),27 it should be kept in mind that once a nonexclusive licence has been granted the potential opportunity to license the same work on an exclusive basis has been lost. It should also be noted that in some jurisdictions, creators and/or publishers are required to assign rights to an RRO so that the RRO can represent the copyright owner in connection with certain uses of the work, and that assignment may complicate the use of a Creative Commons licence for creators from that jurisdiction.28 However, in many circumstances in which the copyright owner has clearly made the informed decision to permit the use and redistribution of a work on a permanent basis on the terms set forth in a Creative Commons licence, that licence can be a valuable tool for achieving the copyright owner’s goals.
The use and reuse by third parties of works distributed under a Creative Commons licence should be approached with similar care. It is important to review and comply with the form of licence applied by the original copyright owner. For example, the applicable Creative Commons licence may limit use of the work to non-commercial purposes. Or, it may permit a subsequent user to redistribute and even adapt and change a work even for commercial purposes, but require (under the ‘share-alike’ formulation) that the subsequent work be distributed on the same licence terms as the original work, a requirement that may or may not fit the business model of the subsequent user. It should also be kept in mind that Creative Commons licences are explicitly not intended to supersede or replace the exceptions or limitations that apply to copyright works under the relevant laws. So if the particular use of a Creative Commons-licensed work falls within an exception like ‘fair use’ or ‘fair dealing’ the factors relevant to a decision to use that work will be no different from those which should be considered if that licence did not apply.
A publisher’s efforts to properly obtain the rights needed for the journal article or book chapter may be rendered pointless if third parties are providing unauthorised copies or access, without recompense to the author or publisher, and the publisher is not taking, or doesn’t have the right or authority to take, legal steps to enforce these rights. Third parties providing unauthorised copies or access have varied their methods to now include offering content online, and in some cases do so for non-commercial reasons.29
Piracy takes many forms, including traditional print piracy involving warehouses and lorries, sometimes enabled by parties involved in legitimate production or distribution services. Some pirated editions are of surprisingly good quality, in terms of the quality and consistency of the production and legibility of images and text, and the quality of paper and binding. The works of international authors and publishers are often highly prized, and some customers are not always careful or concerned enough about quality or legality, especially if the price is significantly lower than for a legitimate product.
Piracy became digital more than a decade ago, with vendors offering CD-ROMs with multiple works on one disk for a low price. In some cases these products were sold in flea and street markets, sometimes through online auctions such as eBay. However, eBay has been generally cooperative with publishers over the last few years in monitoring and disqualifying vendors of such materials. Piracy has migrated to the web in other ways, including to sites that enable or encourage the posting of e-book files by individuals (file sharing sites). Often these sites involve the posting of unauthorised content of all types, including music and films, and are supported by business models involving ‘membership’ fees or advertising. One of the largest sites, RapidShare, has over recent years been subject to numerous challenges from copyright owners including publishers (most cases have been brought in Germany), and has recently undertaken greater efforts to ‘filter’ posted files to identify and delete illicit content.
Some of these Internet sites are located in jurisdictions where the lamentable state of the rule of law makes litigation uncertain and even pointless, especially where, as would generally be the case, the plaintiff will be perceived by the court system as the outsider and ‘foreigner’. However, even in such instances, the business operations of the site, whether arranged through credit card and other payment systems or supported by advertisers, often have a link to a country where the rule of law is applied more consistently, and the payment providers and advertisers may be subject to legal claims in such countries. Such providers may also respond to social pressure and may not be fully informed about the questionable activities of some of the sites to which they are providing services or support.
When bringing formal legal claims, evidence and documentation will be required, both as to the actions and conduct of the defendant and as to the rights of the plaintiff. For traditional print piracy the evidence of conduct may well require cooperation with local authorities on investigations of shipments of pirated goods, and in this area collective investigations done by trade associations such as the Publishers Association (UK) and the Association of American Publishers (AAP) have been indispensable. For digital piracy, evidence in the form of screen shots, downloads from the sites, and careful documentation of the same, will be required, and in some countries the courts will require that such evidence be collected by certain official agents. Copyright litigation in the US in particular will require copyright registration of the works to initiate a suit and to obtain statutory damages (damages set by law that may be available in the absence of or as an alternative to actual damages).30 Publishers will typically need to provide their author agreements (and in some cases editor agreements) to demonstrate that the rights have been transferred to the publisher (including the right to enforce), and that the publisher has full legal authority to pursue such matters. This applies equally to journal articles and books. In some jurisdictions only the original creator or author will be deemed legally capable of bringing a copyright litigation claim, and therefore approval or participation by authors may be required.
Maintaining proper administration of author and editor agreements, and copyright registration certificates for US enforcement purposes, is therefore an indispensable part of an enforcement programme. Publishers are not always well organised in these areas, and it is likely that any publishing house entering into a significant enforcement programme will need to invest in a fair amount of ‘house-cleaning’ to pull its records together and to be able to easily find all the relevant documentation for a particular work, an investment of resources that may not be trivial.
Copyright owners often have to consider whether to bring actions themselves in the civil court system, or to coordinate with government prosecutors and agencies (for example, the relevant customs authorities). Government agencies will often have significant resources and investigative and seizure capacities well beyond what is available through the civil court processes. Nonetheless, prosecutors are selective about the cases that they bring, and will probably only bring actions if they feel the targets are significant and their actions are material. Additionally, once the government initiates legal action, the government will be the entity directing the strategies and tactics in a particular case, and will of course aim to secure judgments and seizures. In many instances, rights holders will utilise litigation as a way of encouraging settlement and negotiation, often after previous attempts have not been given serious credence by the defendant, and may therefore want to preserve more control over strategies and outcomes.
As noted, not all unauthorised copying and distribution is done for commercial purposes by parties without socially redeeming qualities. Motives may be mixed, and there are individuals who sometimes create a scanned version of a work because they truly believe there are no available alternatives and because they believe the work is important and should be shared. In many of these instances, the suspicion is that individuals have not tested the question of availability with much rigour, given that in the Internet age more and more copyright works have been made more easily discoverable and broadly available through normal commercial channels.
Other parties such as libraries, research institutions and universities play a significant role in informing their user communities about permitted uses under publisher licences, and there has been important and useful work to try to simplify and clarify licence language (for example in the ONIX-PL project31.
These same institutions have a heritage and a mission of providing access for educational and research purposes, and understandably wish to embrace digital technologies to enhance their services. The legal basis for some of these actions, an exception to or limitation of local copyright law, may not be clear-cut, and there have in recent years been significant disagreements over issues such as electronic course packs and international supply of copied articles, with rights holders generally supporting a system of permissions and licensing options.32
In these instances, litigation will be a way of testing the limits of copyright law and exceptions and limitations and of settling areas of the laws that legislation has not fully clarified. Such cases are sometimes truly precedent-setting, as in the Texaco decision33 in the US, which established a boundary of commercial use in the corporate environment. Such cases are usually brought by trade associations or groups of publishers given the potential impact of the precedent and likely expense of major litigation.
There is a strong and fundamental relationship between copyright and publishing. This is not an accident – the origins of copyright law can be traced back to the professional development in past centuries of an independent publishing industry (or at least one independent of religious authorities). Then, as now, copyright law was seen to serve a public purpose by encouraging the broad dissemination of works that might otherwise have had only limited distribution. Public policy considerations also apply in the treatment of certain principles and exceptions from country to country, related to whether certain types of unauthorised copying also serves a public good. These considerations are particularly complex in migrating principles developed for the print environment to the digital.
Copyright law has evolved to deal with technological changes before, and there is no reason to believe that with goodwill and intelligence copyright law cannot evolve again to deal with the Internet age. In fact the laws of most countries have already made significant steps in this direction over the past 10 years.
Advocates for the commoditisation of published information are often strident and sometimes, on a surface level at least, compelling (don’t we all want ‘information to be free’ of constraints?), but generally fall short of offering alternatives with sound financial footings to support the current and critical editing processes and publishing services. Publishers have adapted their business practices to accommodate some of the concerns that have been expressed. For example, certain publishers have begun asking for limited exclusive rights rather than copyright transfers; some are experimenting with or have adopted non-subscription business models such as the ‘author pays’ mechanism. The process is evolutionary and ongoing.
Public policy analysts should always consider that our world is currently rich, some might say awash, in high-quality published information. That is an enormous social good, and sets the bar high for the advocates of alternative approaches in discussion over whether their suggested approaches can support a similarly vital infrastructure of published content. As legislatures and courts continue to consider how copyright law will evolve in response to the changing digital landscape, publishers and authors must be prepared to carry the burden of demonstrating the value that they provide to knowledge, to learning and to society as a whole.
International Publishers Association (see http://www.internationalpublishers.org/)
The International Assocation of Scientific, Technical & Medical Publishers (see http://www.stm-assoc.org/)
The International Federation of Reproduction Rights Organizations, with useful links to national RRO sites (see http://www.ifrro.org/)
British Copyright Council (see http://www.britishcopyright.org/)
capacity of the Copyright Office records (see http://www.copyright.gov/)
The EU Information Society directorate, relevant for copyright policy matters (see http://ec.europa.eu/dgs/information_society/index_en.htm)
1.Contracts dealing with rights acquisition are discussed under ‘Publishing agreements’. Other types of contracts, like those entered into between publishers and other publishers (for example, co-publishing, translation and distribution agreements) and between publishers and customers (for example, subscription agreements), are beyond the scope of this chapter.
3.This has been a particularly controversial issue in the UK, where the defendant in a libel case does not have available to it certain defences that apply under, for example, US law. One prominent example of this is the case brought (and subsequently dropped) by the British Chiropractic Association against science writer Simon Singh.
4.‘Originality’ in a copyright context does not mean ‘novel’ or ‘unique’. A work is sufficiently ‘original’ to be eligible for copyright protection if it includes some level of creative expression, which can be very small, that originates with the author.
5.Where a factual compilation is in the form of a database it may, in some jurisdictions, be subject to a form of protection that is somewhat similar to, but not the same as, a copyright. See, for example, the EU database directive (Directive 96/9/EC).
6.It is also possible for a work to be dedicated to the public domain, or for rights under copyright to be waived by contract. See discussion under ‘Creative Commons and similar licences’.
7.See ‘Publishing agreements’.
8.The text of the Berne Convention can be found at the WIPO web site, at http://www.wipo.int/treaties/en/ip/berne/trtdocs_wo001.html. The ‘three-step’ test is in Article 9(2), which was added as part of a revision of the treaty done in Stockholm in 1967.
9.The US ‘fair use’ doctrine was first developed by the courts but is now set out in Section 107 of the US Copyright Act (17 U.S.C. §107). It states that a particular use will be deemed ‘fair’ (and therefore non-infringing) if it is made ‘for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.’ A determination of whether a particular use is ‘fair’ must consider four factors: ‘(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.’
10.When the primary format for distribution of scholarly works was print, the relationship between the publisher and the ultimate customer for the work (for example, the library or scholar receiving a copy of the journal) was typically managed through the application of copyright law. The customer got ownership of a tangible copy; the rights (if any) of the owner of that tangible copy to reproduce or redistribute work were determined by applicable copyright laws. Digital distribution has changed things dramatically.
12.The DMCA was an amendment to the US Copyright Act. It can be found at 17 U.S.C. §1201 et. seq.
13.There are several EU Directives that deal with the subjects covered in the WCT. They include: Directive 91/250/EC (copyright protection for software), Directive 96/9/EC (database protection), and Directive 2001/29/EC (prohibiting devices for circumventing technical protection measures).
15.A copy of the proposed Orphan Works directive can be found at http://ec.europa.eu/internal_market/copyright/docs/orphan-works/proposal_en.pdf.
17.In this respect, extended collective licensing has some aspects in common with the class action mechanism adopted by the proponents of the Google Books settlement, and thus far rejected by the court. Both approaches contemplate that licences could be granted on behalf of a rights holder without explicit authorization unless the rights holder has expressly ‘opted out’. The judge in the Google Books case expressed concern that this ‘opt-out’ approach was inconsistent with the underlying principles of copyright. But the scope and limitations of copyright are determined by statute, and a legislative change might create an ‘opt-out’ mechanism even if a court considering approval of a class action settlement cannot.
18.Under the ‘work-for-hire’ doctrine, the employer is deemed to be the owner of the copyright from the moment of creation if the work is prepared by a full-time employee acting in the course of his or her employment. There are other circumstances in which a work may become a ‘work-for-hire’. The party commissioning the creation of the work can in some cases (such as, for example, in the case of a contribution to a collective work) become the copyright owner under the work-for-hire doctrine by contract, which may apply to some forms of contributor agreements.
19.In countries that have a moral rights regime, copyrights are often regarded as primarily economic rights, and moral rights protect the creator’s noncommercial interest in his work. Moral rights typically include at a minimum rights of attribution (the right to be identified as the author) and integrity (the right to object to any distortion, mutilation or modification of the work that is prejudicial to the author’s honour or reputation). See, Berne Convention, supra at footnote 8, Article 6bis.
21.Because government employees sometimes prepare research articles, journal article agreements do, however, sometimes have to address specific questions about public domain works or government-owned rights that less commonly arise in book publishing agreements.
24.For use with works for which the creator wishes to make a dedication to the public domain and waive all copyrights, Creative Commons provide a separate tool, the ‘CC0 Public Domain Dedication’. Information about CC0 can be found at http://wiki.creativecommons.org/CC0.
25.Additional information about those groups can be found at their web sites: for the Free Software Foundation at http://www.fsf.org/; for the Open Software Initiative at http://www.opensource.org/. The CC0 Public Domain Dedication (mentioned above at footnote 24) is intended for use with software as well as with other types of works.
26.To enhance the likelihood that its licences will be enforceable, Creative Commons offers both generally applicable versions of the licences and ‘ported’ versions that can be used by creators in certain specified jurisdictions and have been tailored to the laws of those jurisdictions.
27.Creative Commons offers a variation or more accurately an addition to its basic licences, called ‘CC+’ that is designed to facilitate the granting of permissions to users wishing to go beyond those uses permitted by the relevant Creative Commons licence. Additional information is available at http://wiki.creativecommons.org/CCPlus#Simple_Explanation.
28.The question of whether an assignment or ‘mandate’ of rights to an RRO interferes with the use of the Creative Commons licences for some works may exist in a number of European countries (including Finland, France, Germany, Luxembourg, Spain and the Netherlands) as well as in Australia and Taiwan. Copyright owners in those countries would be well advised to do more specific analysis on this issue and contact their individual RROs.
29.For purposes of this chapter, we use the word ‘piracy’ to refer to concerted practices of providing unauthorised copies or access to copyright works, without authorisation of or compensation to the copyright owner or rights manager, for a commercial purpose. Not all unauthorised use or copying is done for a commercial reason, and non-commercial unauthorised copying, while not technically ‘piracy’, may nevertheless be infringing if it does not fall within a defined copyright exception or limitation.
30.US copyright law was substantially amended in the late 1970s to eliminate most of the ‘formalities’ that had previously part of US law (i.e. registration and notice requirements; the requirement that the copyright be ‘renewed’ after a fixed period of years). This brought US copyright law in line with copyright law elsewhere and permitted the US to become a party to the Berne Convention. Notwithstanding subsequent US accession to the Berne Convention and its prohibition of copyright formalities, the requirement that a work be registered for copyright in the US prior to the institution of an infringement lawsuit and as a pre-condition to the availability of statutory damages has remained a part of US law. See 17 U.S.C. §§411, 412.
32.The long-awaited lower court decision in the case brought by publishers against Georgia State University, dealing with uses of copyright works in e-coursepacks or ‘electronic reserves’, was delivered in May 2012. Although the court accepted the principle that such uses can exceed fair use, the court’s view on the method by which fair use is applied would expand the scope of the exception more than publishers would believe is appropriate. The decision will probably be appealed. For more information, see the AAP press release on the decision at http://www.publishers.org/press/66/.
33.American Geophysical Union v. Texaco, Inc., 60 F.3d 913 (2nd Cir. 1994).