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When lawyers talk about “standard” clauses and courts refer to publishing contracts as “standard agreements” it is not to suggest that there is a standard form such as we expect for certain real estate transactions. What we mean by “standard” is that the contract clauses address similar concepts of rights and duties expressed in language differently crafted by each publisher. We will comment on the standard clauses from the Author’s perspective. The reason to emphasize the Author’s perspective is that publishing contracts are not negotiated from the ground up. They are prepared by the Publisher and delivered to the Author as though ready for signature. And, many Authors (some to their regret) sign without understanding what the contracts contain or what rights they are giving up.
The first of the so-called “standard” clauses in traditional publishing contracts is the Grant of Rights. Depending on the business model the author will grant many of her rights for the term of copyright to a traditional publisher, fewer rights for a limited term to an ebook publisher, or retain all rights granted under the Copyright Act if she self publishes.
We start from the proposition that if a Publisher offers a contract to an author the rights it is bargaining for have significant economic value. Contracts signed without negotiation are drafted primarily with the publisher’s benefits in mind and only incidentally with the author’s. Publishers understand this and are generally amenable to making some contractual changes as long as the changes don’t undermine their economic interests.
U.S. copyright law and the Copyright Act are never far from publishing contracts. A logical beginning is to consider the following questions:
1. What rights does an Author have that a Publisher would want to license? And,
2. Where do the rights come from?
The answers are in the U.S. Copyright Act. Section 102 provides that “Copyright protection subsists … in original works of authorship fixed in any tangible medium of expression. “Literary works” is the first of 8 categories of “works of authorship.” Other “authors” include composers, dramatists, choreographers, artists, sculptors, and architects.
Section 106 of the Copyright Act lists the exclusive rights granted to Authors. The list is commonly referred to as a “basket of rights.” The Author has the exclusive rights to do and to authorize others to
reproduce the copyrighted work
prepare derivative works
distribute copies to the public
perform the work and
display the work publicly
This basket of rights is divisible, meaning that individual rights can be licensed separately. Authors should resist giving Publishers every right they have. There is no point, for example, in giving most Publishers “performance” rights, which they will not be able to exploit. Most authors do not want to give up their right to prepare derivative works, yet some publishing contracts contain language that does just that.
At a minimum Publishers ask for the rights to reproduce, publish, distribute and sell a book to the public. A “standard” Grant of Rights clause reads:
The Author grants to the Publisher the sole and exclusive right during the full term of copyright and any renewals or extensions thereof to exercise and license (i) the right to reproduce, publish, distribute and sell the full length Work in the English language in a product reproduced in print-on-paper or other physical media (“book form”); (ii) the right to use the full length content of the Work in the English language in electronic media; and (iii) the subsidiary rights to the Work specified below, in the following territories.
You will notice that the Grant of Rights clause contains six elements:
1. The “sole and exclusive right” to exploit the Work;
2. For the full term of copyright and any renewals or extensions;
3. To reproduce, publish, distribute and sell the Work;
4. HOW? In “book form” AND in “electronic media”;
5. The right to sublicense subsidiary rights; and
6. All rights are to be exercised in stipulated territories.
Under the 1976 Copyright Act the full term of copyright (if the contract is not terminated earlier) is the life of the author plus 70 years. Publishing contracts also enumerate the Subsidiary Rights granted in a separate clause. We will discuss subsidiary rights in another essay.
To have a work included in a compilation is a goal eagerly sought after by authors. It is a distinction for a story or article to appear in an anthology. What should the author be alert to? The question comes up in discussing digital aggregation of compilations in the context of authors’ rights under the Copyright Act. The answer is found in sections 103 and 201(c) of the Copyright Act as construed in decisions from the United States Court of Appeals for the Second Circuit and the Supreme Court.
Compilers and authors have complementary rights. Section 103 provides in pertinent part
The copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. (Emphasis added)
Authors typically grant exclusive first publication rights to the compiler but non-exclusive rights thereafter. A non-exclusive right is not a transfer of rights under the Copyright Act. A “compilation” is defined in Section 101 as “a work formed by the collection and assembling of preexisting materials.” It includes “collective works” which are works “in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”
Section 201(c) of the Copyright Act is composed of two sentences. The first concerns the author; the second the compiler. The first provides: “Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution.” The second sentence defines the compiler’s rights:
In the absence of an express transfer of the copyright or of any rights under it, 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. (Emphasis added)
Legally, author and compiler have separate rights under the Copyright Act, but the compiler’s “privilege of reproducing and distributing the contribution” after its initial appearance is limited.
Imagine that an author has contributed a story to a compilation which is one of a series, for example a quarterly anthology of short stories. The compiler wishes to have the entire series made available to future readers by an electronic database provider. Essentially two scenarios can be envisioned. In the first, the compiler licenses the series of compilations (the archives) to a third-party who aggregates the material in electronic and CD-ROM databases without the author’s permission. The compiler assumes the “privilege” to license the individual stories in the compilation. In the second scenario, the compiler (also without permission) either creates or licenses the compilations for distribution in a format that duplicates the compilations page for page.
The first scenario was the subject of a case decided in favor of authors, Tasini v. New York Times, 206 F.3d 161 (2nd Cir. 1999), affirmed by the Supreme Court, 533 U.S. 483 (2001). The second was decided in favor of the compiler, Faulkner v. National Geographic Enterprises Inc., 409 F.3d 26 (2nd Cir. 2005). Authors win in the first case because section 201(c) does not permit the author of a collective work (the compiler) to license an individual contribution without the author’s agreement to “express[ly] transfer … [her] copyright.” The compiler wins when the medium of reproduction preserves the original format.
The author of an individual contribution to a collective work owns the copyright to that contribution. Any unauthorized reproduction and distribution generally infringes the copyright unless such use is specifically protected by the Act. There are two sides to this principle: Tasini illustrates one; Faulkner the other. In Tasini, individual contributors’ works were licensed by the compiler for inclusion in electronic databases. The presumption under section 201(c) is that the author of a short story (or article, as in Tasini) “gives the publisher the author’s permission to include the article in a collective work … [as well as] a non-assignable, non-exclusive privilege to use the article as identified in the statute.” The Court held that section 201(c) does not permit compilers (or, as in Tasini, publishers”) to license copyrighted works where they “may be retrieved individually or in combination with other pieces originally published in different editions of the periodical or in different periodicals.”
Putting its decision in context with Tasini, the Court in Faulkner emphasized the different factual circumstances between the two cases. “Crucial to our decision” (in Tasini) “was the fact that each article had to be retrieved individually from the particular database and made ‘available without any material from the rest of the periodical in which it first appeared’.” The Supreme Court held that “publishers are not sheltered by §201(c) because
the databases reproduce and distribute articles standing alone and not in context, not “as part of that particular collective work to which the author contributed, “as part of … any revision thereof, or “as part of … any later collective work in the same series.”
In contrast National Geographic did reproduce the back issues of the magazine “as part of the collective work to which the author contributed or as part of any ‘revision’ thereof’.” National Geographic is entitled to the § 201(c) “privilege” because it converted the “intact periodicals (or revisions of periodicals) from one medium to another.” The Court noted that
Each issue of the magazine was scanned two pages at a time into a computer system. As a result, the [complete digital collection] user sees exactly what he or she would see if viewing an open page of the paper version, including the fold of the magazine.
Having complete digital collections available for the reading public is valuable – individual works would otherwise be lost in the accumulation of newer works. However, to scan separate individual works into a database must be expressly agreed upon by each author to avoid exposure to liability for copyright infringement. A digital database should benefit authors as well as readers and compilers.
Literary agents are the filters to the publishing industry; the first readers; and mainly indispensable. Acquisition editors rely on their tastes and take their calls. In relation to authors they are like as adventurers to booty: they seek and sell. Their fee, a commission for placing an author’s work, is spread over the economic life of the publishing contracts their efforts bring into being. What exactly is promised and performed and the commission the literary agent is entitled to is set out in the parties’ agreement. A literary agent typically receives a commission of 15% of the publisher’s gross revenues from book sales or licenses of subsidiary and ancillary rights. Author/agent agreements are terminable, but an agent’s right to commissions for services performed survives.
Authors are not captive to their agents. We stress “not captive” and “services performed” because these issues arose in Lampack Agency v. Grimes, an unreported New York case decided in October 2010, and further reviewed in an appellate decision announced on March 1, 2012 (1st Dept.) The appellate division affirmed the trial court’s judgment dismissing the literary agent’s complaint that it was entitled to commissions from contracts negotiated after the author terminated the agency. The questions raised and the answers given in this case are significant markers as to an agent’s right to share in proceeds from subsequently created production after his connection with the author has ended.
Whether or not there is a written agent/author agreement, commissions are protected through a clause incorporated into the publishing agreement, an “Agency Clause.” The agent’s theory in Lampack rested on the inclusion in the publishing agreement negotiated by the Lampack agency of an option provision for the author’s next work of fiction. The publishing agreement for the “option” work was negotiated by the author’s new agent.
The Lampack Agency included the following “agency clause” in the publishing agreement:
The Author hereby appoints [PLA] irrevocably as the Agent in all matters pertaining to or arising from this Agreement. . . . Such Agent is hereby fully empowered to act on behalf of the Author in all matters in any way arising out of this Agreement. . . . All sums of money due the Author under this Agreement shall be paid to and in the name of said Agent. . . . The Author does also irrevocably assign and transfer to [PLA], as an agency coupled with an interest, and [PLA] shall retain a sum equal to fifteen percent (15%) of all gross monies due and payable to the account of the Author under this Agreement.
If a discharged agent has negotiated a publishing agreement that includes an option on the author’s next work, is he entitled to receive a commission on the publishing agreement for the option book? Both courts in the Lampack case made it clear that if such a right exists it would have to be expressly stated in the agreement between the author and the agent.
What does it mean for the author to have “irrevocably assign[ed] and transfer[ed] to [an agent] … an agency coupled with an interest”? What an author “irrevocably assign[s] and transfer[s]” is limited to commissions paid as a percentage of the author’s earnings. “An agency coupled with an interest” (the trial judge citing a case from 1896) “[means that] as a part of the arrangement with the principal, the agent received title to all or part of the subject matter of the agency.” The trial court stated:
In this case, the commission provision grants PLA a 15% commission in the proceeds from its sale of rights in Grimes’ literary works and not an interest in those literary works themselves…. (Emphasis added).
The appellate court went a step further:
It is not reasonable to interpret the phrase “this Agreement” to include either extensions of the 1999-2003 agreements or an agreement for the future work mentioned in the 2005 agreement …. If Grimes and Penguin had meant to give plaintiff commissions on such extensions and future agreement, they would have said so, especially since the 2005 agreement had a specific Option on Next Work clause.
Indeed, to interpret otherwise (in the Court’s words) would produce an “absurd result.” Rather,
Interpreting “this Agreement” to mean only the actual contract signed by the parties, not future agreements or extensions, is consistent with the doctrine that “[a]n at-will sales representative is entitled to post-discharge commissions only if the parties’ agreement expressly provided for such compensation.” (Emphasis added).
An agent engaged for an unfixed period is entitled to commissions on future contracts only for services performed during his agency. The appellate court in Lampack reached back to a 1900 case to explain why an agent is not entitled to commissions received for contracts entered into after discharge with customers he originally secured. In that earlier case the Court held:
He was to have his commission upon all such business, not merely because he had secured these original contracts, but because he was there to aid, if necessary, in securing renewals or additional contracts, and in keeping his customers in touch with the defendant …. contracts. He was consequently entitled to commissions upon renewals or additional contracts which came in during his period of employment…. The customers were … not his when they chose to contract directly with the defendant after his connection with the latter had ceased.
The legal principle is clear. An agent’s right to commissions is for services that result in one or more contracts. The “interest” agents have which survives termination of their agency accrues from their having completed services. The expectancy, if there is any, comes from fulfilling the purpose for which the agent is engaged. The phrase “an agency coupled with an interest”, which refers to ownership of a literary property, does not belong in an Agency Clause because that is not what the agent has. In Lampack the phrase served only to invigorate a dispute. And, who wants that?
The principal legal mechanisms for protecting copyright of works recopied on the Internet without permission and in violation of an author’s copyright is laid out in the Digital Millennium Copyright Act (DMCA). The major aggregators of content have developed policies and take down forms in compliance with the DMCA. If a copyright owner finds unlawful copying of her material she can request the Googles of the world to take it down. Google and the other aggregators have developed copyright-infringement notification policies for both DRM free (digital rights management) and digitally accessible works with embedded copyright protection systems. This short note only deals with DRM free materials, § 512 of the Copyright Act. Materials embedded with copyright protection systems are covered in § 1201 et seq. of the Act.
The Google notification form asks a series of questions that match the statutory list in §512 (c)(3)(A) including whether the complained about material is a copyright infringement. The series ends with this notice:
IMPORTANT: If you knowingly misrepresent that material or activity is infringing, you may be subject to liability for damages. Accordingly, if you are not sure whether material available online infringes your copyright, we suggest that you first contact a lawyer. Please also note that your message to us may be forwarded to the party who filed the original copyright complaint.
This intimidating coda is based on § 512(f) of the Copyright Act. It provides:
Any person who knowingly materially misrepresents under this section —
(1) that material or activity is infringing, or
(2) that material or activity was removed or disabled by mistake or misidentification,
shall be liable for any damages, including costs and attorneys’[] fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.
There is not a great deal of case-law interpreting this provision of DMCA, but federal courts that have addressed the provision have offered additional gloss on the meaning of the terms “knowing” and “material misrepresentation.” “Knowingly” has been interpreted to mean ‘that a party actually knew, should have known if it acted with reasonable care or diligence, or would have had no substantial doubt had it been acting in good faith, that it was making misrepresentations.” Online Policy Grp. v. Diebold, Inc., 337 F.Supp.2d 1195, 1204 (N.D.Cal. 2004). And “[a] material misrepresentation is one that ‘affected [the infringer or service provider's] response to a DMCA letter’.” Capitol Records, Inc. v. MP3tunes, LLC, 611 F.Supp.2d 342, 346 (S.D.N.Y. 2009) (quoting Online Policy Grp.,337 F.Supp.2d at 1204).
Let us get our bearing. Copyright protects “original work[s] of authorship fixed in any tangible medium of expression,” regardless of whether the work has been registered. As a general rule, infringement is not actionable until the author has a certificate in hand (although this may not be true for all Circuits). That is, the author cannot commence or maintain an action in federal court until the work is registered. But the DMCA is a self-help procedure. Only if the service provider refuses to take down the infringing (or alleged infringing copy) is the author authorized to proceed further with injunctive and legal relief. There are questions that courts have not yet reached in commencing an action for infringement of unregistered material. The Copyright Office provides some information on its website.
Copyright law protects authors who have registered their works. They are generally well attuned to copyright for their separately standing works, but less so when it comes to shorter works accepted for publication in compilations such as collections and anthologies. Section 103 (a) of the Copyright Act states that “[t]he subject matter of copyright … includes compilations.” A “compilation” is a collection of items in which a number of separate and independent contributions are collected into an organic whole. However, § 103(b) provides that the
copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.
The statutory language makes clear that there are distinctions between the compilation “author” and “authors” of works collected in the compilation. Section 103 tells us that a compilation can be copyrighted, but it “does not imply any exclusive right in the preexisting material.” In fact, “[t]he copyright in such work is independent of” the copyrights in the included works. The provision continues:
The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.
What rights a compiler may have depends on the nature of the relationship with the author and of the material collected in the compilation. The copyright in the compilation or collection is one form of protection; a separate copyright in the component works is another. Depending upon whether the grant of rights to poetry or short story is exclusive or nonexclusive to the compiler, to be fully copyright protected requires the compiler to register his copyright and the author to register hers. Poetry and short stories included in the compilation that are copyrightable are separately entitled to copyright protection.
The published compiled volume should include two different notices to effectively comply with the Copyright Act. There should be a compilation notice (which protects the author/compiler) and separate authorial notices for the included works (which protect the contributors). (As a separate note, materials included in a compilation that have fallen into the public domain, poetry and short stories for example, do not spring back to copyright life or in any way benefit a deceased author’s estate. The works remain available for use by the public, except to the extent that the compiler has added copyrightable additions:
The copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work.
Infringement that violates the rights of the compiler may also violate the rights of a contributing author, but without a registered copyright of her own the author has no recourse. Why attention to statutory requirements is important is illustrated in cases adjudicating copyright claims of infringement of photographs. What is true of photographs also applies to poetry and short stories. In Bean v. John Wiley & Sons, Inc., CV 11-08028 (D. AZ August 3, 2011) the defendant claimed the photographs had no copyright protection because the registration did not comply with the registration requirements of the Copyright Act. The Court in a separate prior action in which Bean had sued Houghton Mifflin Harcourt Publishing Co., (unpublished decision) concluded that “Corbis’s registration of six compilations containing thousands of photographs by different authors was not effective in registering the individual works in the compilations to the individual authors.”
The Copyright Office does not specifically address registrations works included in a compilation and it is unclear precisely what the law requires the compiler to do. The most recent announcement on this issue is Pacific Stock v. Pearson Education, Inc., 11000423 (D. Hawaii January 11, 2012). The defendant argued that plaintiff did not have valid copyrights for individual works registered only as parts of compilations of various artists. The message from Pacific Stock and other cases, including a 2010 case from the Southern District of New York, Muench Photography, Inc. v. Houghton Mifflin Harcourt Publishing Company and R.R. Donnelley & Sons Company, 712 F.Supp.2d 84, 95 (S.D.N.Y. 2010) is that while group registrations are valid as to the compilations they do not protect the individual works. Therefore, the prudent course is for the compiler to include copyright notices for all contributions including the compiler’s and an author to separately register her own copyright.
Authors control the rights to their works until they agree to license all or some of them. A typical provision in publishing contracts provides that “[t]he Author agrees to grant and assign to the Publisher during the term of copyright and all continuations, extensions, and renewals thereof the exclusive right to publish” the work in stipulated languages and territories. The word “assign” in the phrase “grant and assign” is synonymous with “transfer of copyright ownership” (Act, §101). The exclusive license typically granted in a publishing agreement is such a transfer. However, the phrase “all continuations, extensions, and renewals thereof ” does not override an author’s or her heirs’ statutory rights provided in §§203 (grant of right or publication after January 1, 1978) and 304 (grant of right or publication prior to January 1, 1978). The statutory provisions that permit an author or her heirs to terminate an exclusive license and recapture the copyright is not well understood.
Authors beginning their writing careers are not likely to have any bargaining power in negotiating the disposition of their copyrights. The Copyright Act compensates for this inequality between author and publisher (or any other licensee) by granting authors (or their statutory heirs) the right to terminate exclusive licenses; in effect, to pressure publishers to relicense works that continue to have significant market value.
How does this gift work? The statutory rules are complicated and the benefit conferred can be lost by failure to follow the rules. For both pre- and post-1978 copyrights and depending upon the grant and publication date of the work authors and their heirs should be alert to the notice requirements for exercising the termination right. 2013 is a magic year; 1978 plus 35 years. (It is either 35 or 40 years depending on the grant of rights and publication date. I’ll work only with 35 years here). Sections 203 and 304(c) do not apply to authors who produced their works as “works made for hire.”
Section 203 of the statute provides
In the case of any work … the exclusive or nonexclusive grant of a transfer or license of copyright or of any right under a copyright, executed by the author on or after January 1, 1978, otherwise than by will, is subject to termination under the following conditions:
(1) In the case of a grant executed by one author, termination of the grant may be effected by that author or, if the author is dead, by the person or persons who, under clause (2) of this subsection, own and are entitled to exercise a total of more than one-half of that author’s termination interest….
(2) Where an author is dead, his or her termination interest is owned, and may be exercised … as follows:
(A) The widow or widower owns the author’s entire termination interest unless there are any surviving children or grandchildren of the author, in which case the widow or widower owns one-half of the author’s interest….
The Act goes on to delineate the interests of the surviving children. The notice has to be signed by a majority of those entitled to receive the benefit under the Copyright Act.
This termination right provides authors or their statutory heirs the opportunity to capture some of the added value produced by the lengthened copyright term of life plus 70 years. The typical contract provision such as quoted above would have the author believe that having granted an exclusive license when she had no idea of the economic value of her work she (or her husband and children) are stuck with it for the full term of copyright. The quoted language in the grant of rights (“grant and assign”) does not constitute a waiver; the termination right is inalienable and overrides any contract provision to the contrary. The right cannot be taken away, although it can be exchanged for an improved financial arrangement negotiated at any time within the window for exercising the termination.
The termination provision is not appropriate for every author or every work. It is directed to authors whose works have such value that the publisher with exclusive rights will bargain with the author for a new contract for the remaining years of copyright.
Fair use presupposes expressive material that is both copyrightable and copyrighted. (I leave for another day the issue of misappropriation of material previously submitted to defendant under contractual terms). Uncopyrightable material in copyrighted work is not protected so there is no issue of unfair taking. Scenes a fair discussed in a recent note are generic elements, as are character types and common expressions. They are not “owned” by any one person, but are infinitely exploitable common property; part of the creator’s culture’s inheritance. They are as much in the public domain as works no longer under copyright created prior to 1923. All clay! Court decisions are instructive in separating protected from common property. The question is, What has the creator done with her clay?
In Alexander v. Murdoch, an unpublished decision from the Southern District of New York (May 27, 2011) plaintiff complained that defendants plundered plot, characters and locale. (Masters also plunder their cultural artifacts, but this is the province of literary critics, not lawyers). The dispute in Alexander involved plot and characters in a television script. The basic concept of copyright is that ideas, themes, characters and locale are not protected; expression is. “[W]here a copyrighted work contains both protectable and unprotectable elements, courts apply “a more discerning observer test, which requires substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed [work].” In a police drama, it is expected that there are policemen and suspects and perpetrators. In a family drama there are interactions among family members. Similarities are unavoidable whether or not the accused is familiar with the creator’s work.
The two works in Alexander are comedic family dramas. “[T]he comedic devices shared by both works and identified by the plaintiff — characters driving recklessly, men slapping each other on the backside, people drinking alcohol as a means to cope with a stressful family situation — are common plot elements and thus are not subject to copyright protection.” (I am omitting citations, but emphasize that there is a pedigree of cases). When you abstract fictional plots to a sufficient level of generalization they will be found similar to other plots in the same genre. “Copyright protection does not extend to stock themes commonly linked to a particular genre.” Thus, “basic plot ideas involving voodoo as a dramatic exposition of culture or a missing body as a comedic prop are not protectable.” The Court found that the “remaining plot similarities identified by the plaintiff are alleged at an overly-abstract level of generality.” At that level of generality, plots do not merit copyright protection.
A similar course of analysis is applied to characters. The plaintiff in Alexandra first alleges that Loony Ben (its creation) and Modern Family (defendants’ creation) are substantially similar because both (one example among a full list) depict characters singing off color songs at family gatherings. “Yet the details of these scenes render them significantly different.” Transformations from “dowdy” to “beautiful” are off the shelf elements. “There is simply no similarity between Kelly’s transformation from a librarian with ‘glasses, no make-up and dowdy, unflattering, spinster clothes’ into a stripper who provides entertainment at bachelor parties and Claire’s decision to change from pajamas into street clothes and put on lipstick upon learning that handsome firefighters are coming to her house.” “[L]ists of ‘similarities,’” (citing cases) “like the one that plaintiff has provided, ‘are inherently subjective and unreliable, particularly where the list emphasizes random similarities scattered throughout the works’.”
In comparing characters, courts “consider the totality of their attributes and traits.” Thus, “[n]o character infringement claim can succeed unless [the] plaintiff’s original conception sufficiently developed the character, and [the] defendants have copied this development and not merely the broader outlines.’” Hogan v. DC Comics, 48 F. Supp. 2d 298, 310 (S.D.N.Y. 1999) (quoting Smith v. Weinstein, 578 F. Supp. 1297, 1303 (S.D.N.Y.), aff’d, 738 F.2d 419 (2d Cir. 1984)); see also Lewinson v. Henry Holt & Company, LLC., 659 F. Supp. 2d 547, 574 (“‘[T]he less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.’” (quoting Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (Hand, J.)). As a result, “basic character types” and “stock characters” are not copyrightable. Lewinson at 567-68, 574; Jones v. CBS, Inc., 733 F. Supp. 748, 753 (S.D.N.Y. 1990). Similarities among “less developed … characters” are understandable because they are essentially types: simply colors on the palette, not the painting. There are different ways in which characters, themes and scenes can be developed, so that in comparing one with the other, dissimilarities (age, gender, psychology, occupation) undercut infringement. “Copying which is infringement must be something ‘which ordinary observation would cause to be recognized as having been taken from’ the work of another.” Dymow v. Bolton, 11 F.2d 690, 692 (2nd Cir. 1926).
The Copyright Clause of the U.S. Constitution provides for copyright protection to “original works of authorship.” The Supreme Court has stated that for a work to be protected it has to “possess[] at least some minimal degree of creativity.” Feist Publ’ns, Inc. V. Rural Tel. Serv., 499 U.S. 340, 345 (1991). There must be some intellectual labor involved. The Code of Federal Regulations, 37 C.F.R. §202.1(a) lists some of the material not subject to copyright protection. It includes “short phrases such as names, titles, and slogans.” Moreover, that a work (as a whole) has been registered is not conclusive that all linguistic and structural bits and pieces are equally protected. So, for example, if the alleged infringement is an unprotectible element there is no infringement even though it may be identical or substantially similar to the original. In determining infringement, the focus is on “the similarity of the expression of an idea or fact, not on the similarity of the facts, ideas, or concepts themselves.”
“Like scènes à faire, individual words and short phrases are generally not protected because they lack the requisite originality.” Prunte v. Universal Music Group, Inc., 699 F.Supp.2d 15 (D. Columbia, 2010). Plaintiff in Prunte complained that defendant copied words and phrases from his copyrighted songs. To his “Fire in the Hole” (title of the song) the defendant had “Fire in Da Hole”; to his “God, Pick Up the Phone” the defendant had “Lord, Give Me a Sign”; to his “I’m So High” the defendant had “So High.” The claim for “Fire in the Hole” was rejected for being a title. “Lyrics using cliched language – such as the equation of being high to touching the sky – ‘are too trite to warrant copyright protection’,” citing Johnson v. Gordon, 409 F.3d 12, 24 (1st Cir. 2005). The court concluded that “[a]s a whole, the similar elements listed by [plaintiff] amount to nothing more than a ‘random’ assortment of ‘similarities scattered throughout the works,’ which ‘[do] not support a finding of substantial similarity where [the] works as a whole are not substantially similar.”
If an “ordinary phrase” lacks the “minimal degree of creativity” it cannot be protected under any other statutory or common law theory. In Starobin V. King, 137 F. Supp.2d 93 (N.D.N.Y. 2001), for example, the author created a voluminous list of “correspondences” demonstrative according to the author of “literary rape.” The alleged “telling similarities” included “hearing footsteps on gravel (Blood Eternal), and hearing footsteps on black tar (Desperation)”; “driver talks on walkie-talkie (Blood Eternal), and author talks on cellular phone (Desperation)”; “tooth pulp like undigested meat (Blood Eternal), and raw tissue from mouth and nose like raw meat (Desperation)”; and “gull with blood drained out (Blood Eternal), and dog devoured by buzzards (Desperation).”
Even if the alleged infringer acknowledged familiarity with the plaintiff’s work, employing similar phrases do not add up to copyright infringement. The most recent case on titles and “ordinary phrases” is Syrus v. Bennett, et ano., ___ F.3d ___ (10th Cir. November 3, 2011). Plaintiff (appearing pro se) argued that the alleged infringed phrases, “Go Thunder” and “Let’s Go Thunder” are protected under the theory that “even a small portion of a copyrighted work may be entitled to copyright protection.” While that may be so, “[t]he mere fact that a work is copyrighted does not mean that every element of the work may be protected.” An ordinary phrase taken from a copyrighted work “may be quoted without fear of infringement,” but not one distinctive of the author’s voice. Salinger v. Random House, Inc., 811 F.2d 90, 98 (2nd Cir. 1987).
In Syrus, plaintiff argued that if individual words such as “Budweiser” and “Coors” are entitled to possession then so are his words. But (as the court pointed out) this confuses copyright and trademark protection. “Unlike copyright law, trademark rights ‘grow[] out of … use [in commerce].” That is, trademark protected words and phrases presuppose their use as the source of goods or services. That is not the case with creative works. The “brand” (if such there be one) is the author not the work.
Section 106 of the Copyright Act reads:
[T]he owner of copyright under this title has the exclusive rights to do and to authorize any of the following(emphasis added):
(1) to reproduce the copyrighted work in copies …;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies… of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly….
As a rule of thumb an author should grant the publisher the rights necessary to successfully exploit her work in the medium in which they operate in consideration for which she will receive a fair return on her creative investment. Royalties are fairly uniform among publishers although it is possible to negotiate higher rates based on units sold and bonuses for weeks on bestseller lists. The rights that should be granted to publishers or through agents to specialized licensees depends on the nature of the work to be licensed. Terms that may be appropriate to genre inventions are not appropriate for textbooks productions.
A review of a number of recent publishing contracts from reputable mainstream publishers indicates an increasingly broader demand that the author transfer all of her discrete rights granted under the Copyright Law. Not only exclusive rights to “reproduce, publish, distribute and sell” the work which is “standard”, but exclusive rights to license the work for motion pictures, theatrical, dramatic, and radio and television broadcasting, digital and electronic media and adaptation, and merchandising and other rights for commercial use.
Should publishers get all that they request? If all these rights were granted and none retained the author would lose control of her property and potential economic benefits. Since many of these rights are ancillary to publishing they are more appropriately the province of licensees in the business of exploiting works in those different media. Rights typically transferred to a publisher include “subsidiary rights” – first serial (before) and second serial (after) publication – and translation rights. Income from subsidiary rights is typically divided between publisher and author. Merchandising and commercial rights are more logically granted to parties with expertise to exploit them. If these rights are granted they should be subject to reversion after a limited time and reverted if not exploited.
A troubling provision in contract from a major publisher deals with one of the author’s principal rights in a disguised way. It appears in a clause describing ownership of intellectual property. Under the Copyright Act an author has the exclusive right to “prepare derivative works based upon the copyrighted work.” One contract from a major publisher presumes to authorize the Publisher to “create or to authorize others to create [derivative works] … [that] will, at the Publisher’s option, be owned by the Publisher….” In agreeing to this provision the author would relinquish rights she could license for motion pictures, television and dramatic performances.
By all means be happy that a publisher is interested in your work, but be careful before you sign away more rights than a publisher or licensee can reasonably exploit or the author should reasonably be asked to give.
I wrote a paper that I registered for copyright a few years ago. It was not published. I am now completing a book length work that incorporates the unpublished paper. Can I register the new work separately?
Section 408(e) of the Copyright Law states that “Registration for the first published edition of a work previously registered in unpublished form may be made even though the work as published is substantially the same as the unpublished version.”
On this authority, if an author may register for copyright the same material again, even more so can she register a new work that incorporates the prior unpublished paper. Added material in later editions of a work may also be registered. The copyright form provides boxes for checking off previously registered material. It also provides for exclusion of the earlier (already registered) material from the new copyright claim.
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