nelson.1411@osu.edu | Copyright Corner

Author: nelson.1411@osu.edu (page 2 of 2)

How to Negotiate a Publication Agreement

Dealing with a publisher may be intimidating, but a little work at the beginning of the publishing journey can eliminate work later. A publication agreement spells out what rights are being requested via transfer or license from the copyright holder to the publisher. The rights granted to a publisher can impact your future rights in your work. If you would like to distribute copies of your work or even reuse it as part of future research, instruction, or professional development, then you may need to negotiate with your publisher. To get ready for those negotiations, read on!

#1 – Educate yourself

Knowing your rights as an author under U.S. copyright law can help you understand the strength of your position when negotiating your publication agreement. The bundle of rights encompassed by the word “copyright” goes far beyond just making copies of a work and includes the rights to: reproduce the work, prepare derivative works, distribute the work, publicly perform the work, and publicly display the work. To get educated and know your rights, we recommend starting with the Copyright Basics and Author’s Rights pages of our website. They will give you an overview of what copyright is and is not and provide links to additional information.

#2 – Know what you want

The second step is knowing what rights you would like to keep. Many publishers prefer a complete transfer of copyright or an exclusive license. This allows the publisher to use the work however they deem necessary for publication. Do you want to share your work when teaching courses? Do you want to retain the right to translate your work into other languages, or turn it into a movie? A copyright transfer means that the author, now former copyright holder, may be contractually bound in how they may or may not reuse the work. Additionally, they may not be able to use the work without a statutory exception or permission from the publisher. Think about how you might use your work in the future, and what rights you should keep to allow those activities. Then, move on to the next step.

#3 – Read your contract

Read your publishing agreement. While there are any number of variations on publication rights, there are some that publishers typically use. The three examples below are prevalent among academic publishers. They are: (i) a complete transfer of copyright to the publisher; (ii) a complete transfer of copyright to the publisher, with an immediate license granted to the author; and (iii) a license given to the publisher, with the author retaining copyright.

3A – Transfer of Copyright

This is the most restrictive publishing agreement: You give up your copyright entirely. The American Medical Association (AMA) requests this type of transfer in a publishing agreement for their journals and newsletters. The agreement transfers the copyright in a work, in its entirety, to the AMA using the following language:

I hereby transfer, assign, or otherwise convey all copyright ownership, including any and all rights incidental thereto, exclusively to the AMA….

After signing such an agreement, you would be very limited in what you could do with your work. You would not be able to make copies of your work for teaching or give a reading from your work without permission from the publisher or a statutory copyright exemption.

3B – Transfer of Copyright, with License to Author

Some publication agreements transfer copyright in its entirety to the publisher and immediately grant the author limited license(s) to use the work in specific ways. The American Library Association (ALA) uses this model in a Copyright Assignment Agreement. After using language similar to that in 3A to obtain full copyright from the author, the ALA goes on to provide the author a limited license:

Publisher hereby grants Author a royalty-free, limited license for the following purposes, provided the Work is always identified as having first been published by Publisher:

The right to make and distribute copies of all or part of the Work for use in teaching; …

The right to make oral presentations of material from the Work; …

If the uses allowed by the publication agreement cover all the ways you foresee using your work, then this agreement may work for you.

3C – Publisher Receives a License, Author Retains Copyright

If the language in your publishing agreement isn’t asking for a complete copyright transfer, it is likely asking you to give the publisher a license. The Journal of Machine Learning Research (JMLR) requests a license in order to publish accepted articles in the journal. The pertinent language in their “Nonexclusive Publication Agreement” is below:

…we need from every author whose work is to appear in JMLR certain nonexclusive licenses…. You hereby give to MIT Press the right to be the first publisher of the article in print form…. You hereby give to the Sponsor the right to be the first publisher of the article in electronic form.

MIT Press is asking for a nonexclusive[1] license, which means that you can exercise your rights as copyright owner without asking for permission from JMLR. Be prepared to inform any subsequent publishers about prior publications.

#4 – Negotiations

Based on the type of publication agreement you received, you may have to adjust your expectations of what can be negotiated. A publisher requesting a copyright transfer is less likely to allow an author to keep copyright and grant the publisher a limited license. When setting your expectations, it may be helpful to ask others who have worked with your publisher about their experiences. This is particularly true if they tried, successfully or not, to negotiate their agreement. Some Universities have created resources to help authors negotiate their rights. In particular, the Universities of the Big 10 Academic Alliance have created an Addendum that authors can use when negotiating with their publisher. This addendum works to preserve rights that academic authors commonly wish to keep, all of which look towards removing restrictions from the flow of information and allowing a freer exchange of ideas.

#5 – Make all edits/changes in writing

Whenever copyright is transferred, it must be in writing and signed. One small exception is that a nonexclusive license does not require a signature. In addition, it is recommended that you keep records of your negotiations with the publisher. Note the date you send your request for modification, how you send it (email, postal service, inter-office mail), when you get a response, and of course what the response is. An email will fulfill the requirement for a writing, so be sure to always review your emails before you hit “send”. If you orally negotiate a change in your publication agreement, get those changes in writing. Take extensive notes, summarize your notes in an email, and send it to the publisher with a request that they confirm the information is correct.

Conclusion

The opportunity to negotiate is always available. The publisher may not agree to all of your requests, but asking can ensure that you retain important rights in your work and save you from hassle down the road. Knowing your rights, and which of those rights a publisher is requesting, can help assess a publication agreement and determine what changes, if any, you would like to make. Taking copious notes, and always getting any changes to a publication agreement in writing, will make your negotiations enforceable and truly protect your ability to use your work.

If there is any confusion over what a publication agreement is requesting, check out Phrases to Look for in Publisher Copyright Agreement Forms. For questions on your rights or your publication agreement, feel free to reach out to the Copyright Resources Center by posting a comment here on the blog, tweeting at us (@OSUCopyright), or sending us an email.

Have you negotiated a publication agreement? Were you successful in getting the changes you requested? Let us know what your experience was like by leaving us a comment!

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By Marley C. Nelson, Rights Management Specialist, and Sandra A. Enimil, Head of the Copyright Resources Center, The Ohio State University Libraries.

[1] A nonexclusive license is a contract that allows a copyright owner to grant another party the ability to exercise one of the bundle of rights contained in copyright, while retaining the ability to simultaneously exercise that right. These licenses are at times given for a limited length of time. An exclusive license grants another party the ability to exercise one or all of the rights contained in copyright, but does not allow the copyright owner to simultaneously exercise those rights. An unlimited exclusive license has little, aside from its name, to distinguish it from a full transfer of copyright.

Debunking Top Copyright Myths: The Myth of the Innocent Infringer

October 10, 2016 / nelson.1411@osu.edu / Comments Off

A persistent myth in the world of copyright law is that of the innocent infringer. This particular myth takes two forms, both of which will be addressed in this post. The first is the myth of a complete defense, in that if you didn’t know you were infringing someone’s copyright, you can’t be found liable. The second is a partial defense, in that if you didn’t know you were infringing someone’s copyright, although you may be found liable, you won’t have to pay any damages.

Neither of these is correct. Where did this myth come from and why does it persist? This is best answered by looking at the history of United States copyright law. Let’s take a trip in the copyright time machine (CTM)!

The first stop is in 1790. Back then, being an innocent infringer meant you were not liable for infringement. The Copyright Act of 1790 required that an infringer be “knowing”[1] with regards to the copyright status of the work. There was actually a mens rea[2] component to copyright infringement. Not only would you not have had to pay any damages, but you had not actually committed copyright infringement in the first place. Which is good, because the statute required that “offenders shall… forfeit and pay the sum of fifty cents for every sheet which shall be found in his or their possession”[3]. Translated into 2015 dollars, that $0.50 could be as much as $47,500[4] per page! This protection afforded innocent infringers was incredibly valuable.

Unfortunately for innocent infringers, those protections have been stripped away over the ensuing versions of United States copyright law. Jumping back in the CTM, we can skip ahead to 1909, a year of major revision in U.S. copyright law. The Copyright Act of 1909 removed the “knowing” requirement, making copyright infringement a strict liability offense. This meant that if someone made an illegal use of a protected work, they had infringed copyright. Their mental state was irrelevant and innocent infringement was no longer a defense to copyright infringement. This was the end of innocent infringement as a total defense to liability for copyright infringement. The 1909 Act did, however, prevent defendants from having to pay any damages if they could show that they were an innocent infringer who was “misled by the omission of the [copyright] notice”[5]. So in that very specific instance of innocent copyright infringement, a defendant could avoid having to pay damages.

Hopping back into the CTM, let’s fast forward to 1989 and the current version of United States copyright law. Here, we have the Copyright Act of 1976 [6], as influenced by the Berne Convention [7]. Copyright infringement is still a strict liability offense under this version of U.S. copyright law, so innocent infringement is no defense to liability. It’s also harder to avoid paying some kind of monetary award if an individual is found liable. Yet, innocent infringement does provide a small sliver of relief for some defendants under the 1976 Act.

The first is for an infringer who “was not aware and had no reason to believe that his or her acts constituted an infringement of copyright”[8]. In this instance, a “court in its discretion may reduce the award of statutory damages to a sum of not less than $200”[9]. That might sound great, but let’s look a little more closely. First, a defendant bears the burden to prove that they were not aware that their work was infringing copyright. Second, even if they meet that burden, the court still has discretion in reducing damages. This means the court may not reduce damages, even if the defendant proves the infringement was innocent. Third, damages are only reduced, not eliminated completely. Fourth, and finally, this is only an option if the plaintiff in the case chooses to be awarded pre-defined statutory damages, as opposed to actual damages and profits[10]. To add insult to this injury, a defendant may still be on the hook for the plaintiff’s court costs and attorney’s fees[11]. These fees can amount to hundreds of thousands of dollars, if not more. For example, the attorneys who successfully argued that the happy birthday song is not protected by copyright were awarded over four million dollars in fees [12].

The second is for an infringer who “believed and had reasonable grounds for believing that his or her use of the copyrighted work was a fair use under section 107, if the infringer was: (i) an employee or agent of a nonprofit educational institution, library, or archives acting within the scope of his or her employment … or (ii) a public broadcasting entity”[13] or an employee of a public broadcasting entity. If an infringer falls into one of those specific employment categories and reasonably believed that their use was a fair use, then no damages will be assessed. Of course, just like in the first example, the infringer could still be liable for paying the plaintiff’s court costs and attorney’s fees.

Today, innocent infringement is no longer a defense in a copyright infringement case, and even an unwitting infringer could be liable for what might be extremely high court costs and attorney fees. Innocent infringement, as a defense to liability or a method of obtaining complete relief from liability for damages, no longer exists and we have come a long way since 1790. Do you think these changes are an improvement? Leave a comment and let us know how you feel about the treatment of “innocent” infringers in United States copyright law!

Please visit the other post in our series – If there’s no (c), is it copyrighted?

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By Marley C. Nelson, Rights Management Specialist at the Copyright Resources Center, The Ohio State University Libraries

[1] Copyright Act of 1790, 17 U.S.C. §2 (1790).

[2] “Mens rea” means guilty mind. In order to be found guilty of many crimes, you must commit an illegal act (e.g. copying someone else’s copyright protected work) while having a certain level of intent to do so (e.g. knowing the work is protected by copyright).

[3] Copyright Act of 1790, 17 U.S.C. §2 (1790).

[4] Samuel H. Williamson, “Seven Ways to Compute the Relative Value of a U.S. Dollar Amount, 1774 to present,” MeasuringWorth, 2016. Accessed via https://www.measuringworth.com/uscompare/relativevalue.php on 08/31/2016.

[5] Copyright Act of 1909, 17 U.S.C. §20 (1909).

[6] Copyright Act of 1976, 17 U.S.C. §1 (1976).

[7] The Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853. Accessible at http://uscode.house.gov/statutes/pl/100/568.pdf

[8] Copyright Act of 1976, 17 U.S.C. §504(c)(2) (1976).

[9] Copyright Act of 1976, 17 U.S.C. §504(c)(2) (1976).

[10] See, generally, Copyright Act of 1976, 17 U.S.C. §504 (1976).

[11] Copyright Act of 1976, 17 U.S.C. §505 (1976).

[12] See, e.g., Andrew Blake, Attorneys awarded $4.6 million over ‘Happy Birthday’ copyright claim, Washington Times August 19, 2016. Accessed via http://www.washingtontimes.com/news/2016/aug/19/attorneys-awarded-46-million-over-happy-birthday-c/.

[13] Copyright Act of 1976, 17 U.S.C. §504(c)(2) (1976).

Debunking Top Copyright Myths – Part One

September 12, 2016 / nelson.1411@osu.edu / Comments Off

The first myth we’re debunking is one of the most common: If it doesn’t have a copyright symbol (©), then there’s no copyright protection, right?

How did this particular misconception start? To answer that, we’re going to have to take a trip in the copyright time machine, back to 1909 [1]. That was the year Congress made its second major update to the copyright law of the United States (the first was in 1831 [2], when Congress granted copyright protection to musical compositions and extended the original copyright term for a protected work from 14 years to 28 years). Under the 1909 Act, cleverly entitled “Copyright Act of 1909”, there were a couple of hoops that creators had to jump through before their works were protected by copyright.

The first hoop that creators had to jump through was publication. In 1909, publication was usually required before a work was protected by copyright [3]. So before a work could be protected by copyright, there had to be “copies… reproduced for sale or distribution”. [4] The second hoop was that, in addition to a work being published, it also had to include an appropriate notice of copyright:

[T]he notice of copyright required by [the 1909 Copyright Act] shall consist either of the word “Copyright” or the abbreviation “Copr.”, accompanied by the name of the copyright [proprietor], and if the work be a printed literary, musical, or dramatic work, the notice shall include also the year in which the copyright was secured by publication. In the case, however, of copies of works specified in subsections (f) to (k), inclusive of section five of this Act, the notice may consist of the letter C [enclosed] within a circle, thus: ©, accompanied by the initials, monogram, mark, or symbol of the copyright proprietor: Provided, That on some accessible portion of such copies or of the margin, back, permanent base, or pedestal, or of the substance on which such copies shall be mounted, his name shall appear.” [5]

Basically, you had to have a conforming notice of copyright in or on your published work before it would receive copyright protection. In 1909, the United States expected certain formalities of rights holders in order to receive copyright protection. This notion, that copyright protection wasn’t something you could just hand out to anyone, held on for decades and reappeared in the next major revision of U.S. copyright law.

Let’s jump back in the copyright time machine and fast forward to 1976, when the also creatively named “Copyright Act of 1976” was signed into law. The 1976 Act superseded and replaced the 1909 Act, becoming the new statutory sheriff in the town of copyright. When it was first enacted, the Copyright Act of 1976 also required that published works include a copyright notice before they could be granted copyright protection [6]. The language of the requirement had changed a bit, but it still required the word copyright, or an abbreviation like “Copr.” or “©”, the year of first publication, and the name of the copyright owner [7]. With some exceptions, works that did not contain a proper copyright notice were not protected works, and fell into the public domain. Those requirements might have lasted into the distant future, if not for this pesky little thing called the rest of the world. The United States had to come into the fold of the rest of the world at some point.

Let’s jump back in the copyright time machine and head to March 1, 1989. That was the date The Berne Convention Implementation Act of 1988 took effect [8] in the United States. The Berne Convention for the Protection of Literary and Artistic works[9] (better known as the Berne Convention) is an international copyright agreement with 171 member parties (including the United States) [10]. The Berne Convention first came into effect in Berne, Switzerland, in 1886. Originally a treaty between eight nations (Spain, Great Britain, France, Haiti, Liberia, Switzerland, Tunisia, and Germany), 22 years later the number of signatories had almost doubled. Today, nearly every country in the world is a member party of the Berne Convention (171 countries out of 206(ish) total [11]). Despite the trending popularity of the Berne Convention, the United States refused for over 200 years to sign on to the agreement. This was in large part because becoming a member party would require rather substantial changes to the copyright law of the United States. In particular, it would require that copyright law in the United States “not be subject to any formality” [12]. In effect, the Berne Convention forbids the United States from requiring any formalities – such as registration with the Copyright Office or publication with notice – before granting a creator copyright protection for their work.

Once The Berne Convention Implementation Act of 1988 took effect, copyright protection in the United States became automatic. Gone was the requirement that a copyright notice be affixed to a work. Gone was any requirement that a work be registered with the Copyright Office. Current copyright law in the United States provides that copyright protection attaches instantly and automatically to “original works of authorship fixed in any tangible medium of expression” [13].

What does this mean? For one thing, if you’re still reading this it means you have incredible staying power when it comes to muddling through somewhat dry information about the history of copyright in the United States!

It also means that all types of materials, even if they have no copyright notices on them, are protected by United States copyright law. That, in turn, means that your use of content without either permission from the creator or an appropriate exception to copyright protection would be copyright infringement.

At this point, I know what you’re thinking. “Well if we don’t need to follow any formalities to be protected by copyright, then why do we have a Copyright Office at all?”

That may not be exactly what you were thinking, but just play along.

While copyright protection requires neither registration nor notice, there are some benefits to both. If a copyright owner does want to sue someone for copyright infringement, they may not do so in federal court unless their copyright is registered. And if a work does include a copyright notice, it prevents mischievous copyright infringers from claiming that their infringement was innocent, meaning that they didn’t know the work was copyrighted.

Speaking of which, we invite you to read the other post in our series – The Myth of the Innocent Infringer.

———-

Please leave a comment telling us about your experiences with this copyright myth!

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By Marley C. Nelson, Rights Management Specialist at the Copyright Resources Center, The Ohio State University Libraries

[1] Copyright Act of 1909, 17 U.S.C. §1 (1909). Accessible at http://www.copyright.gov/history/1909act.pdf.

[2] Copyright Act of 1831, 17 U.S.C. §1 (1831). Accessible at http://www.copyrighthistory.org/cam/tools/request/showRepresentation?id=representation_us_1831.

[3] Copyright Act of 1909, 17 U.S.C. §1 (1909).

[4] Copyright Act of 1909, 17 U.S.C. §62 (1909).

[5] Copyright Act of 1909, 17 U.S.C. §18 (1909).

[6] Copyright Act of 1976, 17 U.S.C. §401 (1976).

[7] Copyright Act of 1976, 17 U.S.C. §§401-406 (1976).

[8] The Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853. Accessible at http://uscode.house.gov/statutes/pl/100/568.pdf.

[9] The Berne Convention for the Protection of Literary and Artistic Works, opened for signature 9 September 1886, 1161 UNTS 30 (entered into force 5 December 1887). Accessible at http://www.wipo.int/treaties/en/text.jsp?file_id=283698.

[10] See Copyright Office Circular 38a. (38A.0416), page 8. Accessible at http://www.copyright.gov/circs/circ38a.pdf.

[11] See https://en.wikipedia.org/wiki/List_of_sovereign_states, or https://www.cia.gov/library/publications/the-world-factbook/index.html.

[12] Article 5(1) of the Berne Convention. Accessible at http://www.wipo.int/treaties/en/text.jsp?file_id=283698#P109_16834.

[13] 17 U.S.C. §102(a).

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Copyright Corner

Author: nelson.1411@osu.edu (page 2 of 2)

How to Negotiate a Publication Agreement

Debunking Top Copyright Myths: The Myth of the Innocent Infringer

Debunking Top Copyright Myths – Part One

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