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Who Controls Electronic Rights - The Publisher or the
Writer?
Lloyd L. Rich
The increased importance of
electronic publishing requires publishers and writers to pay greater attention
to electronic rights issues. Thus, most contemporary publishing contracts, at
least those where at least the publisher or writer was represented by counsel,
contain some reference to "electronic rights". One difficulty that
exists is that even though most publishers and writers are familiar with
electronic rights, or "e-rights" as they are commonly referred to,
neither the publishing industry, legal profession or the courts have defined
with specificity the meaning or scope of e-rights. Courts will therefore
analyze the language of individual publishing contracts, at least until an
industry standard defining e-rights has been accepted, to determine whether the
licensor or licensee fully controls or has limited control of specific e-rights
in any given situation. This situation makes it essential for the publisher and
writer to explain in the publishing contract what they specifically intend
e-rights to include.
Definition of e-rights
Since technology is changing so
rapidly it is not possible to provide a precise definition of e-rights.
E-rights may currently include the right to place a literary work:
in an online database retrieval
system;
in whole or in part, on a CD-ROM
(Compact Disk - Read Only Memory);
in whole or in part, on a DVD
(Digital Video Disk),
on the Internet;
on a website on the World Wide
Web; and
on an electronic bulletin board
such as those included with services such as America Online, CompuServe, and
Prodigy.
Because this list of e-rights is
not comprehensive publishing contracts often contain a "future technology
clause" that grants to the publisher or third party licensee the right to
exploit a work in "all media now known or hereafter conceived or created."
The purpose of the future technology clause is to try to ensure that e-rights
include the right to create a derivative work in a technology that may not have
been developed or even contemplated at the time the parties signed the
contract. Today, for example, book publishers are discussing the feasibility of
"electronic publishing on demand." This would be a new form of
marketing and distribution for primarily backlist or limited market titles that
permits a customer to order a book of his or her choice from a publisher's
catalog and have the text transmitted in digital form from a computer database
to a remote printer in a retail bookstore or other location. Therefore, any
future definition of the term e-rights might have to include electronic publishing
on demand. Conceivably there may be no limit to the scope of what rights may be
included in e-rights.
The constantly changing and
broadening definition of e-rights has in some instances exacerbated the
conflict between publishers and writers over the exploitation of rights.
Publishers, to ensure their ability to commercialize literary properties to
their full extent, and because they cannot predict the future, should
incorporate a future technology clause in their publishing contract. On the
other hand writers will frequently object to the inclusion of the all
encompassing future technology clause.
Courts do not however all
interpret the future technology clause uniformly. Different interpretations of
this clause may occur, especially if there is a great difference in bargaining
power between the parties. Therefore, the publisher should not rely entirely on
the future technology clause as the sole basis for the writer's grant of
e-rights to the publisher.
On many occasions a court will
look beyond the future technology clause and evaluate the entire contract to
determine the intent of the parties. This makes it imperative for the publisher
to include within the grant of rights clause a detailed description of the
specific rights granted by the writer. The detailed grant of rights clause is
also helpful in that it provides both the publisher and writer with a clearer
understanding of their e-rights obligations. Therefore, it is recommended that
the grant of rights clause should enumerate the specific e-rights as explicitly
as possible and, at least from the publisher's standpoint be reinforced with a
future technology clause. It should also be remembered that it is a general
rule of law that any ambiguity in a contract is usually construed against the
party that prepared the contract, which in the case of publishing contracts is
normally the publisher, and that it is the responsibility of the licensee to
specify the medium to which a license extends, even if such medium has not as
yet been developed.
Court Interpretations of Future
Technologies
Judicial interpretation of future
technologies and whether a "new use" was contemplated at the time the
publisher and writer signed the contract is not a recent phenomenon. Courts for
many years have interpreted entertainment industry contracts, including
publishing, to determine whether a grant of rights for an existing use included
a grant of rights for a new use. Some examples include whether a (1) motion
picture grant included a grant for "talkies," (2) motion picture
grant included a grant for television rights, and (3) grant for television
included a grant for videocassette rights. These cases are illustrative because
they reveal that the only way publishers can protect their rights with any
degree of certainty is by making sure that the grant of rights clause
explicitly deals with e-rights and future technologies in an unambiguous
manner.
An important case involving an
ambiguous grant of rights is Bartsch v. Metro-Goldwyn-Mayer, Inc., where the
court held that a broad grant of motion picture rights included television
rights. The court decided that television, even though in a nascent stage, had
been developed at the time the contract was negotiated. Reasoning that it was
"possible" for the contracting parties to have known about television
the court concluded that the grant of motion picture rights included television
rights. The court found this solution to be more equitable than attempting to
ascertain the intent of the parties, nearly forty years previously, when the
contract was executed.
In another important case, Cohen
v. Paramount Pictures Corp. , the court held that a license to exhibit a film
"by way of television" did not include videocassette rights.
Reasoning that because videocassettes were made available to the public by a
completely different means than television - television required a station or
cable to send its signals into consumers' homes while videocassettes were
available for rental or for sale and did not require a station or cable to view
them -- the court concluded that the grant of television rights did not include
a grant of videocassette rights. The court also relied upon the fact that VCRs
had not yet been invented at the time the parties executed the contract.
The Bartsch and Cohen decisions
appear to indicate that if a publishing contract contained an ambiguous clause,
but if the technology had been invented at the time the contract was written,
that a court would hold that the new technology and new use should be
recognized as being included in the original grant of rights. Conversely, if
the technology had not been invented at the time a contract was written, the
technology and new use would not be recognized as having been included in the
original grant of rights.
However, the above generalization
does not always hold true. For example, in Rey v. Lafferty, the court decided
in favor of the author that videocassette rights for the Curious George books
were not included within the grant of television rights even though
videocassettes and VCRs existed at the time the contract was executed. The
court based its decision on the fact that "television viewing" and
"videocassette viewing" are not "coextensive terms"; the
"general tenor" of the contract, which to the court indicated that
the author did not intend to give away the videocassette rights; the fact that
the licensee who prepared the contract was a professional investment firm
accustomed to licensing agreements; and that the author was an
"unsophisticated" party - an elderly woman who did not participate in
preparing the contract.
In conclusion, there is no way to
predict with certainty how a court will determine a future technology or new
use case. Therefore, the best way to protect e-rights in the publishing
contract, whether as the publisher or writer, is to explicitly enumerate them
in the grant of rights clause and backup this protection by the inclusion of a
future technology clause.
Consequences of Ignoring E-Rights
The New York Times in 1995 announced
its intention to retain all e-rights of its freelance writers. This policy
would give the newspaper e-rights without additional compensation to, or
specific authorization from, the writers.
The New York Times' announcement
caused uproar within the writer community. Jonathan Tasini, a freelance writer
for, among others, The New York Times, initiated a class action lawsuit against
the newspaper and other publishers for copyright infringement. The law suit
alleged that the publishers, by including his writings in electronic databases,
went beyond the scope of the grant of rights clause, since the agreements did
not include a grant of e-rights to the publishers.
Tasini was recently decided,
whereby the court found that the revision right held by the publishers of a
collective work under 201(c) of the Copyright Act included the right to
republish a collective work, such as a newspaper or magazine, in electronic
media, including on-line databases and CD-ROM products. The Tasini decision
does not in the least resolve the issue of e-rights. However, if nothing else,
the Tasini case points out the danger that is inherent in not negotiating the
issue of e-rights. Litigation is always expensive, time-consuming and uncertain
and it should not be the manner by which any party should want their e-rights
determined..
E-rights currently stand at an
intersection of developing law and constantly changing technology. Suffice it
to say, much uncertainty will remain until e-rights are defined with greater
specificity than they are today, if that is possible. Therefore, the best way
for the publisher and writer to handle the e-rights issue is to negotiate the
issue fully and include their specific intent, with as much detail and clarity,
in the grant of rights clause. This is essential because the courts, if called
upon to determine an e-rights issue, may also attempt to ascertain the intent
of the parties. Therefore, to prevent future e-rights problems the parties
should make their intent clear.
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