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.
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.
Strings of effectively arranged letters, words, phrases, clauses and sentences are the essence of expression. They are owned by the author who creates them and protected by copyright law, although infringements are not actionable unless the work is registered with the Copyright Office. If an author includes in his work expressive material owned by others (compilations or derivative works) he or she must carve out in the copyright application what is not to be included in the certificate. This requirement applies whether or not the author has been granted permission to use the expressive material. Section 103 of the Copyright Act provides as follows
(a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.
(b) The copyright in a compilation or derivative work 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 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.
The copyright application asks the applicant to state under oath the specific content both included and excluded for registration. The Copyright Office defines material to be excluded as “preexisting material”, as follows:
Material is preexisting if it has been previously registered, previously published, is in the public domain, or is not owned by this claimant. (Emphasis added).
The Application lists four categories for exclusion, “Text,” “Artwork,” Photographs,” and “Computer Program.” There is also a blank field for “Other” which can be used to more specifically particularize what is being either excluded and included for copyright registration.
In speaking about expressive material, it is not only that which is written, or if written only published, but includes verbal expression as memorialized for example in an interview. The expressive material in unpublished letters as another example is owned by the writer of the letters not the recipient who owns only the paper on which the content is written. None of this material can be copied unless it meets the criteria for fair use. Control over the reproduction of a work and derivatives, dramatic performances and other exclusive rights is reserved to the author.
Rights to unpublished material was the principal issue in a Salinger lawsuit concerning the use of the most interesting quotations from letters in an unauthorized biography of the author. “Salinger” held the Court, “has a right to protect the expressive content of his unpublished writings for the term of his copy-right, and that right prevails over a claim of fair use under ‘ordinary circumstances’,” Salinger V. Random House, Inc., 811 F.2d 90 (2nd Cir. 1987). Ideas, however, are not copyrightable (to be discussed in a later Note).
For protecting expressive material, what applies to longer works is equally true of shorter published or accepted for publication on the Internet. Internet anthologists and aggregators who publish material have the right to register their aggregations as compilations, but depending on the terms of license (exclusive or non exclusive) have no control over an author’s future use of his or her work. Separately, authors may register their own journalistic and opinion pieces and exploit them as they will. Whether to register, however, may depend on the occasion for the publication, whether independent or part of an aggregation and the value of the expressive material.
Ephemeral and generic musings pass in a blink. More thoughtful notes and essays standing independently are more likely candidates for registration. There is a line of cases that hold that expressive material may even extend to short phrases if the “sequence of thoughts, choice of words, emphasis, and arrangement … satisf[ies] the minimal threshold of required creativity.” The “minimal threshold of required creativity”, however, is a high bar. Flash fiction or flash any other genre may qualify and should be registered. Copyright registration is relatively inexpensive and can be completed online for $35.
If the purpose for writing is to provide serious material to an Internet audience and the author is not the publisher, publishing is not without bumps. In a recent contract involving contributions to a website “journal” a website publisher agreed to accept articles on a non-exclusive basis (which is fine), but its contract provided that “[i]f you choose to republish your articles, you MUST publish them either with a NoIndex HTML tag or as an image file” (which is not so fine because although it appears not to restrict it limits the author’s ability to reach audiences other than the publisher’s). So, in clicking “accept” at least pay attention to the terms and who will own the published piece.
I recently reviewed a manuscript of a non-fiction, semi-scholarly work analyzing images of historical prophesy (tarot) cards. The author explained that she wanted to illustrate her book with copies of cards and photographs of ancient artifacts to demonstrate thematic links to the images on the cards. The cards are mostly of ancient provenance, although some are more recently created modern interpretations of prophetic images. Whether ancient or modern, art and artifacts are owned by museums, cultural institutions or artists who control rights to their collections or copyright.
What permission does an author need to use images of cards and photographs of ancient artifacts in cultural collections? More recently created cards are works of art protected by copyright. Not so with ancient cards and works of art! In one sense these are in the public domain, but they are nevertheless protected by ownership rights against commercial exploitation. Can you copy images from a catalog or a magazine or a newspaper to illustrate your book without having to pay anything to anybody? With respect to the artifacts in cultural collections, the author explained that she had found photographs on the Internet which she intended to download and use in her book. She has also (despite ubiquitous “no photographing” admonitions in cultural institutions) taken some photographs of museum holdings on the sly with a digital camera and wonders whether there are any constraints against using these images.
Images are not for the taking even if not protected by copyright. So, for example, although an author may use her own unauthorized photographs their low resolution makes them unsuitable for publication. Publishers will require her to license high resolution prints which can only be obtained from the museums and cultural institutions who own the originals. In these circumstances, permission is granted in exchange for a “use fee” under an agreement that spells out the author’s limitations of use. Optimally for the creator of a semi- or even scholarly book a “use fee” may be no more than the cost to the institution of creating a reproducible high definition image. The amount of the fee, however, is variable. It most likely depends upon the nature of the work and its intended audience and the territories in which it will be sold. It may also depend on the location of the image in the work – cover art is likely to be more expensive than the same art on an interior page – and requested size (larger images cost more).
Because a publisher will not allow itself to be exposed to any violation of a third party’s intellectual property or contract rights it will demand that all permissions be properly cleared and warranted. Clearing permissions is a time consuming and sometimes costly undertaking. An author, particularly one seeking a mainstream publisher will find that the publisher will require her to obtain permissions. Most likely the task and cost will fall to the author to be paid out of the advance. Publishers do not ordinarily agree to pay for permissions although they may agree to share in the cost of obtaining new illustrations, which necessarily involves contracts with illustrators and photographers and raises another level of copyright ownership.
A misconception about publishing agreements is that the form authors receive is “standard” in the industry. “Standard” is a myth. One imagines an editor saying to an author: “This is our standard contract.” What he means to convey – he is being very nice about it – is that the form contract is fair because it is standard. But, this is a non sequitur. One size does not fit all. “Don’t worry. We’re looking out for your interests” is nonsense. The myth is perpetuated by acquiring parties to induce insomnia. Understandably, repetition of the myth gives strength to the concept of “fairness.” And, for this reason authors may find it difficult to resist the temptation of signing what others have accepted. But, authors should surely resist. She is licensing her copyrights; the publisher or licensee is promising what it will do with them.
It is true that authors and publishers (or other licensees) have in common a desire to profit from the author’s work, but their interests are not isotropous and lawyers for the offering party are more adept in phrasing terms to promote their client’s interests than in attending to the author’s. For this reason alone, publishing (and other) agreements should not be accepted merely on faith of fairness. In every publishing agreement authors can expect to encounter “standard” subjects, such as grant of primary, subsidiary and ancillary rights, division of licensing fees, representations and warranties, compensation in the form of advances and royalties, option for future works, non-compete clauses and so on. However, the language and content of the terms – the promises made by the publisher and its demands upon the author – represent only the publisher’s offer.
The view taken here and in future postings is that authors should know what they are buying when they sign a contract. Some kicking of tires is not irrational. The fact is, publishing and licensing contracts are not drafted for the benefit of the author. They always ask for more than an author should be willing to give. Because the publisher has the advantage of being the first to state the terms of the offer. So, unless the author responds with proposed terms of her own the negotiation is controlled by the publisher’s language and demands. Don’t be placated if questions about the contract elicit the response that the provisions are “standard.” Uncertainty about what rights have been granted will only lead to trouble if the work is commercially successful. The contract should certainly include provisions expressly stating what rights the author has granted and those she retains.
Although it may be difficult for an author to resist picking up the pen and instantly agreeing to the terms offered, a publishing contract from a publisher should be regarded as an invitation to negotiate. Authors should not sign a contract without understanding what she is giving up in exchange for a publisher’s or licensee’s promises. Contract terms are merely proposals until the parties reach agreement.
Important Negotiation Points
1. The publisher should have the resources to distribute and publicize the book in the territory granted;
2. The contract should contain a clause which specifically states which rights are reserved by the author;
3. The contract should be clear about submission deadlines, acceptable manuscript, royalties and bonuses;
4. The contract should contain out of print and termination clauses which permit the author to reclaim all rights to the book or rights which the publisher has not licensed within a reasonable time after notice of demand for reversion.