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Literary collaboration is a marriage of convenience. The parties have to preliminarily agree to their separate and joint responsibilities for the completion and submission of their work. What they think they know and can trust about each other is likely to be more than their ignorance of the other person’s work habits and literary abilities. Past performance does not necessarily assure future results and ability to work together is only tested after execution of the agreement. Think of a collaboration agreement as a pre-nuptial agreement. The unknowns include whether the parties can work together and the chemistry of their separate contributions. Publishers draft termination rights into their agreements for manuscript unacceptability. Collaborators should do that too. If they cannot work together; if one thinks the other’s contributions are inadequate, there should be a way out. Therefore, basic to any agreement is divorce. How do the parties separate if their collaboration doesn’t work?
The answer must come from the well crafted terms of parties’ agreement. Ill-crafted only leads to dispute. Disputes that mature into lawsuits are adjudicated under local (contract) law of the state having jurisdiction of the parties. Ambiguity in the agreement precludes any quick resolution, thereby raising (to a significant degree) the expenses of litigation. (The fact of their being few cases on this subject indicates that prosecuting a claim would likely be prohibitively expensive).
In a dispute in New York, Locke v. Aston, 1 A.D.3d 160 (1st Dept 2003), an appellate court held the phrase “if the collaboration is unsuccessful” ambiguous. “The motion court [explained the appellate court in rejecting the motion court's analysis] declared that ‘Dr. Aston no longer collaborates with Ms. Locke; the collaboration is unsuccessful.’ However, the term ‘unsuccessful’ is susceptible of other meanings.” One of the other meanings is that one of the parties found the other’s work unacceptable. This does not excuse breach of contract, it does not support a claim for defamation.
In addition to ambiguities, the parties’ agreement in Lock was “not complete.” “[D]efendant acknowledges that the April 30 agreement does not preclude remedies for which it does not expressly provide, thereby conceding that the agreement is not complete.” In considering other intentions,
Paragraph 6 of the agreement provides that, “if the collaboration is unsuccessful,” text written by defendant shall revert to him and text written by plaintiff shall return to her, but there is no language indicating that reversion of their respective intellectual property rights is intended to be the sole remedy in the event of a breach by one of the parties or that plaintiff waived all her rights in the event of a breach. Indeed, defendant asserts that remedies for breach “would absolutely exist” if, for instance, future profits were not split as required by the agreement.
At the center of the Locke lawsuit was a claim for defamation. Aston stated that plaintiff did “substandard” work and that the manuscript was “not up to standard.” An opinion clearly disturbing, but not actionable as a defamation any more than it would be if the publisher cancelled the publishing contract for the same reason. The parties had a publishing contract with HarperCollins. The court noted that
The court rejected plaintiff’s argument that the term refers to the parties’ inability to find a publisher, on the ground that when they entered into the agreement the parties had already signed a publishing contract with HarperCollins. However, the publishing contract, which is expressly referred to in the April 30 agreement, provides numerous grounds for the publisher to refuse to publish, and indeed HarperCollins did not agree to go forward until May. The publishing contract required the manuscript to be “acceptable” to the publisher and allowed the publisher to terminate if it did not deem the manuscript acceptable. It also provided for the publisher’s control of all details of publication, including pricing, advertising and promotion of the book. These provisions, and others, made it possible for the parties’ collaboration to be “unsuccessful” even after the publishing contract was signed and even if the parties did not breach their obligations to each other.
In drafting a collaboration agreement more is required than stating what the project is and each party’s contribution to the whole. It has to provide for the kinds of contingencies pointed out in the Locke lawsuit.
In agreeing to publish a work publishers typically demand author “grant and assign” it an exclusive license to “print, publish and sell” the work for the “term of copyright and all continuations, extensions, and renewals thereof” in stipulated languages and territories. In modern publishing agreements the language is clear that the grant extends to digital rights. However, the grant of right in 1970′s contracts typically used the phrase “in book form.” Ebooks were not imagined at that time (or, if they were) their form was not realized until the late 1990′s. There are two questions. First, did the author intend (could it have intended) to grant publisher more than print rights? If she did not then she can separately grant ebook rights to an ebook publisher. Second – an interrogative conundrum – is an ebook a book “in book form”?
It appeared that the questions were answered in Random House, Inc. V. Rosetta Books, 150 F. Supp.2d 613 (S.D.N.Y. 2001), aff’d 283 F.3d 490 (2nd Cir. 2002). In that case, the district court denied a preliminary injunction against Rosetta Books which the Second Circuit Court of Appeals affirmed. Because the parties thereafter settled the dispute the ultimate questions were never answered. But, the district court held (citing New York contract cases) that the phrase “in book form” did not “include the right to publish the works in the format that has come to be known as the ‘ebook’.” The court held that it did not because “in the publishing industry” the phrase “is understood … to be a ‘limited’ grant.” The phrase “limited grant” is anathema to publishers who believe they acquired an exclusive license to “print, publish and sell” the work in every conceivable format “now known or hereafter invented” for the term of copyright.
The unresolved issue of “in book form” has now returned to court in HarperCollins Publishers LLC. v. Open Road Integrant Media, LLP., 11 Civ 9499 (S.D.N.Y complaint filed December 23 2011). The complaint alleges that “[n]otwithstanding the … grant of rights … Open Road, a digital publisher … seeks illicitly to capitalize on HarperCollins’ four decades of publication and promotion of Julie of the Wolves [by] … publishing an electronic version of that book.” The complaint continues:
The rights that HarperCollins acquired from George plainly encompass such electronic means of distribution, which is but a technology-enabled variant for how consumers can read the Work. Open Road’s unlawful exploitation of those rights is directly competitive with sales of the Work in paper format and HarperCollins’ own plans to publish Julie of the Wolves as an e-book.
The Random House case was decided under New York contract law. In affirming the district court, the Second Circuit Court of Appeals added that “New York … has arguably adopted a restrictive view of the kinds of ‘new uses’ to which an exclusive license may apply when the contracting parties do not expressly provide for coverage of such future forms.” New York being the capital of book publishing in the United States it is not surprising that the issue are not been litigated in any of the other Circuits.
Given how the Random House case ended HarperCollins is in a position to test “whether the license extends to ebooks” by exploring the “‘evolving’ technical processes and uses of an ebook … and the reasonable expectations of the contracting parties,” Random House, 150 F.Supp.2d at 615 n. 5. Random House had argued that “the phrase ‘in book form’ means to faithfully reproduce the author’s text in its complete form as a reading experience and that, since ebooks concededly contain the complete text of the work, Rosetta cannot also possess those rights.” The court did not see it that way:
While Random House’s definition distinguishes “book form” from other formats that require separate contractual language — such as audio books and serialization rights — it does not distinguish other formats specifically mentioned in paragraph # 1 of the contracts, such as book club editions and reprint editions….
The Court continued:
Not only does the language of the contract itself lead almost ineluctably to the conclusion that Random House does not own the right to publish the works as ebooks, but also a reasonable person “cognizant of the customs, practices, usages and terminology as generally understood in the particular trade or business” … would conclude that the grant language does not include ebooks.
The Court concluded:
Employing the most important tool in the armamentarium of contract interpretation — the language of the contract itself — this Court has concluded that Random House is not the beneficial owner of the right to publish the eight works at issue as ebooks.
HarperCollins’ arguments are not different. It alleges that Open Road is seeking “to reap where … it has now sown by seeking to divert sales of the Work from HarperCollins in the rapidly expanding e-books market.” It complains that “[t]his fundamental impairment of rights ensured to HarperCollins by contract and copyright law should be enjoined and Open Road’s unlawfully gotten gains therefrom disgorged.”
The next substantive step in the HarperCollins litigation will be an application for a preliminary injunction. The same route as in Random House and the same legal questions. If the contract term “in book form” does not extend to ebooks, then Open Road’s publication is not copyright infringement. If the author only agreed to a “limited grant” (harking back to Random House) she may legally assign her right to a digital publisher to publish her work in ebook format.
One can hardly wait — breathlessly is more apt! — for the next installment on this issue. Until the grant formula “in book form” was abandoned for a more inclusive grant of rights (which is now “standard”) digital rights for works contracted for in the 1970s and on may very well be under authors’ control. Although George has not been named in the lawsuit she undoubtedly executed a publishing agreement with Open Road. That too could be an issue because the ebook will be in competition with the print book, which may violate the non-compete term in the publishing agreement.
Copyright is not limited to literary works. I tend to focus on expressive material in these Notes and will do here, but words in literary works are only one color on the palette of creativity. Literary works (compositions of word strings) are first on the list of 8 in §102 of the Copyright Act. The second on the list is “musical works, including any accompanying words.” All original works of authorship or composership all the way down to draftsmanship (architectural works) are covered by copyright protection. And, the protections and theories of liability that relate to one apply equally to the others. Expressive material, whether words in literary works or musical works are intellectual property. The protections are illustrated in a very recent case from the United States District Court from the Eastern District of Michigan, Southern Division that addresses infringement of “accompanying words” to a musical work. ABKCO Music, Inc. v. Johnnie Washington, 11-10763 (October 18, 2011) involved both words and sound recordings. The sound recordings “infringed” in ABKCO Music were created prior to February,15, 1972, thus not covered in the Copyright Act, so I will summarize the case only as it relates to the song words.
The case is instructive because it illustrates the reach of liability. Not only the infringer itself, but also any party who contributes to the infringement of a copyright has liability to the copyright owner. “Contributory infringement occurs” (quoting from ABKCO Music) “when a party with knowledge of the infringing activity, induces, causes or materially contributes to the infringement conduct of another,” citing a decision from the U.S. Court of Appeals from the 6th Circuit which in turn is citing a decision from the U.S. Court of Appeals from the 2nd Circuit, Gershwin Publi’g Corp. v. Columbia Artists Mgmt., Inc., 443 F.2d 1159, 1162 (2d Cir. 1971). (As in all these Notes I include the case citations for anyone interested in reading the entire cases.)
The ABKCO defendants are the producer and author of a play of the singer/songwriter Sam Cooke, the company that owns the venue at which the play was produced and a marketing company that produced a promotional video (AV Ad). Against the producer and author, plaintiffs claim that they included a medley of Cooke’s songs before the main scenes of the production. The defendants argued that they did not infringe any of the copyrights “because the Songs were performed as a medley prior to the beginning of the Production and not used during the course of the Production itself.”
Against the marketing company, plaintiffs claim that the AV Ad it created included copyrighted songs. The producer and author defendants sought to avoid contributory and vicarious liability by arguing that “they were unaware of the material [the marketing company] used in the [AV Ad] and [that the marketing company] had ‘complete authority to create an e-blast advertisement.” The gist here is that defendants did not “directly infringe on the copyrights … because they did not directly produce or publish the AV Ad.”
The court rejected both defenses. The medley of songs, the direct infringement (despite the claim that it was not part of the performance) was integral to the dramatic presentation. The indirect infringement is actionable against the producer and author under two theories, contributory infringement and vicarious liability. The court explained that
Defendants cannot shield themselves from liability by simply failing to watch their own promotional video. [They] should have known the contents of the AV Ad. Defendants’ relationship with [the marketing company] as we as Defendants’ financial interest in the successful promotion of the Production, renders defendants liable for the copyright infringement of the [marketing company].”
Vicarious liability rests on a principal/agent theory:
Even in the absence of an employer-employee relationship, a defendant can be vicariously liable for copyright infringement when: (1) a defendant has the right to and ability to supervise the infringing conduct and (2) the defendant has an obvious and direct financial interest in the infringement.”
Thus, exposure to liability for infringement of creative works can extend beyond the direct infringer who created the AV Ad to reach the initiator or contributor to the infringements however it may try to disguise its involvement.
I have been asked about blogging and anonymity. Why (you say) should I have to announce myself? (You say further) I want the world to know my opinion of this or that person or company. All very good. There is nothing illegal in the blogger masking herself however disturbing the communication if it is truly an opinion. At the outset it is a First Amendment issue. Courts carefully safeguard a person’s right to express herself anonymously. But, the First Amendment cannot be invoked for all speech. Veils can be pierced. Defamation and invasion of privacy are actionable even against an anonymous blogger. The Internet and other social media tools have so vastly expanded a writer’s ability to reach an audience that careless or deliberately malicious statements are likely to have an adverse impact far beyond a target’s immediate community and do much more damage to reputation and security.
Courts are gatekeepers. The target’s problem is exacerbated when the writer hides behind a mask and asserts her Constitutional right to anonymity. So targets turn to the courts to determine whether the anonymous blogger should be unmasked. There is a careful balancing act, but courts have ordered disclosure of the anonymous writer’s identity for unprotected speech. I do not suppose any of my readers are masked libelers, but it is worthwhile to look at a relatively recent case that addresses disclosure of defamatory content.
The petitioner in In Re Cohen, 25 Misc. 3d 945 (New York County 2009) (involving a pre-action proceeding for an order to compel disclosure for the purpose of framing a complaint) alleged that the anonymous blogger posted “five different weblogs entitled ‘Skanks of NYC’ … which included photographs, captions to the photographs and commentary solely about petitioner.” Further, the “blog contains defamatory statements, including the use of the words ‘skank,’ ‘skanky,’ ‘ho’ and ‘whoring,’ which concern her appearance, hygiene and sexual conduct, and are malicious and untrue.” Words of this kind state a claim for defamation per se in that they impugn a target’s chastity and, in the case of this petitioner, “negatively reflect[] on her business as a professional full-time model.” The anonymous writer (appearing by counsel but not otherwise disclosed) counter-argued that the words “skank” and “ho” are not to be thought of as statements of objective fact, but permissible “trash talk” and “should be treated no differently than ‘jerk’ or any other form of loose and vague insults that the constitution protects.” The court rejected this view:
In the context of this specific blog, such words cannot be reasonably viewed as comparable in meaning and usage to the word ‘jerk’ or any other loose and vague insults, as the anonymous blogger urged.
More importantly, the court also rejected the argument that
Internet blogs serve as a modern day forum for conveying personal opinions, including invective and ranting and that the statements in this action when considered in that context, cannot be reasonably understood as factual assertions.
Similar arguments were made and rejected in a Virginia case circa 2000: “In that the Internet provides a virtually unlimited, inexpensive, and almost immediate means of communication with tens, if not hundreds, of millions of people, the dangers of its misuse cannot be ignored.” In this medium, one
who suffer[s] damages as a result of tortious or other actionable communications on the Internet should be able to seek appropriate redress by preventing the wrongdoers from hiding behind an illusory shield of purported First amendment rights.
Of course, a plaintiff is only entitled to disclosure of the blogger’s identity if she can persuade the court that she has a meritorious claim. The petitioner in In Re Cohen satisfied this requirement and the court ordered the blogger’s identity disclosed.
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