For writers concerned about electronic storage, reproduction and distribution of shorter works, rights issues came to a head in 1997. That”s when a federal court in New York held in Tasini vs. The New York Times that publishers could place the contents of their periodicals in electronic databases and CD-ROMs, unless they”d agreed otherwise with the writer.
The ruling was based on a broad interpretation of Section 201(c) of the Copyright Act, which states that, absent an express transfer of the copyright, “the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” The court considered electronic databases “revisions” of collective works if they include identifying information that preserves the original formatting, such as the issue, date and pages of the individual articles.
A court in San Francisco moved the pendulum slightly back in the 1998 case Ryan vs. CARL Corp., when it was held that publishers could not authorize the defendant, a document fax-delivery service, to reproduce individual articles written by the plaintiffs, freelance writers. Although it was not a direct refutation of Tasini, it was a strong statement of authors” rightsand a direct refutation finally came. In September 1999, to the delight of the writing community, the 2nd US Circuit Court of Appeals reversed Tasini, holding that Nexis and other electronic databases involved were not “revisions” and therefore that “Section 201(c) does not permit the Publishers to license individually copyrighted works for inclusion in the electronic databases.” Although this is now the law of the 2nd Circuit and not necessarily the entire country, few doubt this was the better interpretation of the act.
Let”s summarize the important legal rules. First, unless they expressly transfer ownership in writing, non-employee writers own the copyrights in their works. Second, absent a written agreement, a publisher buys only the right to publish the freelanced work in that issue, a revision or a later issue. Third, selling single copies of an article or including an article in a comprehensive electronic database is not a “revision” and may not be done without the author”s permission.
If this issue matters to you there are ways to protect yourself. (That”s an important if. Many writers are delighted to have their work circulated and available, even if they receive no additional pay. If you are, you”re neither alone nor crazy.)
- Use written contracts that grant defined single-use rights and that expressly prohibit online publication or inclusion in electronic databases. The contract needn”t be formal; it could be an exchange of letters or even your unchallenged notation in the upper right corner: “First Paperbound Serial Rights Only.” (Beware of conflicting legends on publishers” payment checks!) Keep a copy of relevant materials, including e-mail.
If the publisher insists on such rights, make the grant relatively short (one to two years) and require payment for each use. (The Tip Sheets of the American Society of Journalists and Authorscheck out www.asja.orgcontain useful guidance on structuring payment.)
- Register your copyrights, at least in those works with “legs.” You can use Copyright Office Form GR/CP (with Form TX) to register 12 months” of periodical publications with a single application, deposit and $30 fee. (For forms, circulars and instructions, visit the Copyright Office Web site, www.loc.gov/copyright or call 202/707-9100.)
Require your publisher to include a copyright notice in your name by your piece, in standard form: ” 1999 [year of first publication] Abby Author [author”s name]”
- Act on important dates. For example, remind publishers that your piece is scheduled for the December 1999 issue, that payment was due last week, that electronic rights expire next month.
What about pieces published before you got so smart? If there”s a contract, look there first. If not, or there”s none addressing these issues, consider these actions:
- Register your claim of copyright in the works you care about.
- Notify your publisher that you did not grant electronic or database aggregation rights in those works and, therefore, that your piece may not be published electronically without your express permission and additional payment. Refer to Tasini vs. The New York Times.
If the work has already been aggregated, notify your publisher that you didn”t grant electronic rights; that, regardless, you terminate any right to publish or aggregate your work electronically; and that you expect the publisher to have your work removed from the aggregation. Again, citing Tasini should get their attention.
Under the Digital Millennium Copyright Act, signed into law last year, Internet service providers and Web sites can limit their potential liability for contributory infringement if they identify an agent to receive notices of infringement and respond promptly to infringement claims. If you believe your work is improperly posted, consider sending a detailed notice identifying the infringement to all sites and service providers who link to or host the infringing site. (But first, consult an attorney so you don”t violate anyone”s rights yourself!)
Though this is little solace to most writers, the law provides a sure-fire means of terminating copyright transfers and licenses. The Copyright Act generally permits the termination of a grant of copyrights during the five-year period beginning 35 years from the date of the grant. That”s a long wait, but if you have works you assigned or licensed years ago and you want to learn when and how you might terminate the grant, ask a copyright lawyer about these rules.
Howard G. Zaharoff is an attorney with Morse, Barnes-Brown & Pendleton. His articles have appeared in Folio:, The Boston Globe and Amazing Stories.