Category Archives: Managing Authors’ Rights

Shaping Your Publication Contract to Meet Your Goals: Part 2

Posted September 1, 2020
Shelf with colorful books and Authors Alliance logo on blue background

Book publication contracts deserve careful attention because their terms control the rights and obligations of authors and publishers for the life of the relationship between the parties, which can potentially last for decades. Our guide to Understanding and Negotiating Book Publication Contracts helps authors to understand common clauses in publication contracts, recognize how the terms might affect their goals for their books, and negotiate for author-friendly variations of those terms.

In this two-part series, we apply the lessons from our guide to real-life contract terms and illustrate how authors can consider the implications of contract terms and formulate author-friendly variations that advance their interests. This second post covers options, non-competes, the look and feel of a work, and assignment of the agreement. To read the first post addressing grant of rights clauses, subsidiary rights, and rights reversion, click here.

Future Works: Options

Sample Term: “Author agrees that it will offer Publisher the first right to publish Author’s next work […] on the same terms and conditions as those contained herein […].”

Why it could be problematic: The term above could be problematic because it doesn’t give the author the opportunity to decline the publisher’s offer, purporting to lock the author into working with the publisher on his next book. It also could be problematic because it says that the second book’s contract will have the same terms as the first book’s contract. This could be bad for an author whose first book is wildly successful and who may attract an offer of higher royalties for the second book, but must accept the royalty rates agreed upon in the contract for the first book. (Of course, the opposite could be true: the performance of an author’s first book could mean that the terms offered for a second deal may be lower than those offered for the original deal: But this clause doesn’t help with that situation, either, as it gives the publisher the right but not the obligation to publish the author’s next work.)

How to make it better: Options clauses can be softened in a number of ways. For example, authors can limit the definition of the “next work” for which the publisher’s option applies to something closely related to the original work (such as the next book in a series), and authors can even include a right to refuse the publisher’s offer. For more information on options clauses, see pages 131-134 of Understanding and Negotiating Book Publication Contracts.

Future Works: Non-Competes

Sample Term: “The Author agrees that during the term of this Agreement the Author will not, without the Publisher’s prior written consent, participate in the preparation or publication of, or otherwise be interested in or connected with matter that may, in the Publisher’s judgment, conflict or compete with the sale of the Work.”

Why it could be problematic: “Non-compete” clauses can be problematic because they can prevent the author from publishing any books that are of a similar character, ignoring that some authors may write exclusively on a niche topic, for example, because it’s their area of study as a scholar. This term is especially concerning because it explicitly leaves the decision of whether another book by an author will compete with the contracted book at the complete discretion of the publisher.

How to make it better: Ideally, an author will avoid agreeing to a non-compete clause in their contract at all. But publishers may feel strongly about protecting their investment in publishing the author’s book, and don’t want sales to be undermined by competing books. This term could be made better by instead using the phrase, “may reasonably be expected to interfere with the sale of the work” instead of being at the publisher’s sole discretion. And as the term of the agreement can be for a very long time, another improvement is to put a time limit for how long the author must refrain from publishing competing works, such as for one year after the contracted book’s publication. For more information on non-compete clauses, see pages 137-141 of Understanding and Negotiating Book Publication Contracts.

Look and Feel

Sample Term: “The [Publisher] shall have entire control of such production and publication in all forms and media. The paper, printing, binding, title, design, jacket and/or cover […] shall be in the [Publisher’s] sole discretion.”

Why it could be problematic: Typically, authors hand over the manuscript to the publisher and the publisher takes care of the “business” end of actually producing, distributing, and helping with the marketing of the book. However, some authors may want to have at least some input over the “look and feel” of their book. The term above gives total control to the publisher, regardless of how the author may feel about the publisher’s decisions.

How to make it better: If an author is concerned about having no say whatsoever in the look and feel of her book, she can negotiate for the publisher to agree to at least consult with her to get her opinions, or even get a right of approval about things like the design, jacket, and cover of her book. For example, if the publisher presents a book cover that the author loathes, the author can express that opinion and maybe veto the cover. That said, it is important for authors to remember that a publishers’ business is to sell books, and that publishers rely on their extensive experience in how to best accomplish that goal. To learn more about negotiation options for the look and feel of a book, review pages 153-57 of Understanding and Negotiating Book Publication Contracts.

Assignment of Agreement

Sample Term: “The Publisher shall have the right, without approval of the Author, to assign this Agreement.”

Why it could be problematic: Assignment is when a party to the contract (here, the publisher) gives all of their rights and obligations in the contract to someone else. Typically, publication contracts restrict an author’s ability to assign a contract without the publisher’s permission. This is unsurprising—after all, authors are individual people with particular skills, styles, and ideas, and the publisher contracted to work with that specific author. The potential problem with the term above is that the publisher can assign the contract without the author’s approval, meaning that the author has no influence whatsoever on who a future publisher may be. If the author chose the publisher because it’s prestigious, for example, but the publisher wants to assign the contract to a less prestigious publishing house, then the author will probably want to veto the transfer. But the contract says the publisher can assign the agreement no matter how the author feels.

How to make the term better: Ideally, the term will say that the publisher cannot assign the agreement without the consent of the author, though it is likely that the publisher will insist that consent cannot be unreasonably withheld. But this still gives the author the opportunity to consider the deal and the ability to reject the assignment for valid reasons, and balances control because the author must have a reasonable justification for vetoing an assignment. To learn more, check out pages 244-49 of Understanding and Negotiating Book Publication Contracts.

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The examples of covered in this series are just that—examples. Every contract looks a little different, depending on the kind of publisher and the kind of book. While this two-part series on book publication contracts has covered some of the most common terms used in contracts, there are many more that may appear, such as outlining royalty rates or marketing terms. For a deeper dive into contract terms and options for negotiation, be sure to check out Authors Alliance’s guide to Understanding and Negotiating Book Publication Contracts.

Authors Alliance is grateful to Diana Buck, Copyright Intern, for researching and drafting this post.

Shaping Your Publication Contract to Meet Your Goals: Part 1

Posted August 18, 2020
Shelf with colorful books and Authors Alliance logo on blue background

Book publication contracts deserve careful attention because their terms control the rights and obligations of authors and publishers for the life of the relationship between the parties, which can potentially last for decades. Our guide to Understanding and Negotiating Book Publication Contracts helps authors to understand common clauses in publication contracts, recognize how the terms might affect their goals for their books, and negotiate for author-friendly variations of those terms.

In this two-part blog series, we apply the lessons from our guide to real-life contract terms and illustrate how authors can consider the implications of contract terms and formulate author-friendly variations that advance their interests. The first post addresses grant of rights clauses, subsidiary rights, and rights reversion. The second post will cover options, non-competes, the look and feel of a work, and assignment of the agreement.

Grant of Rights

Sample Term: “The Author hereby assigns to the Publisher the copyright and all the exclusive rights comprised in the copyright in the Work and all revisions thereof […] during the full term of copyright […] with exclusive authority to dispose of said rights in all countries and in all languages […].”

Why it could be problematic: When an author writes something original and fixes it in a tangible medium, she typically automatically has copyright ownership in the work. Authors should think long and hard about transferring copyright ownership for the life of copyright as they may come to regret this if, for example, their work falls out of print or the rights are not being actively used. The sample “grant of rights” term above hands total ownership and control of the copyright to the publisher, to be exploited by the publisher at its sole discretion for the life of copyright (which currently lasts for the life of the author plus 70 years). Essentially, unless the author regains her rights (more on rights reversion below), the author will not have a say in whether and how the work is made available and used.

How to make it better: Many authors prefer not to turn over ownership of the copyright to the publisher at all. Instead, the author may try to negotiate for a limited term grant, or to give the publisher a nonexclusive license. A nonexclusive license means that the author grants the publisher the ability to do certain activities (such as make copies of the book and distribute them), but the author will still have the ability to allow other publishers to do the same through similar nonexclusive licenses, or even to do those activities on her own. Even if a publisher does not agree to a limited term grant or a nonexclusive license, authors have many options to negotiate to make the grant of rights more nuanced, such as by limiting the geographic scope, including “use it or lose it” clauses, and requesting revert-back clauses. The grant of rights clause can be modified in myriad ways; to learn more, take a look at pages 44-73 of Understanding and Negotiating Book Publication Contracts.

Subsidiary Rights

Sample Term: “The Author grants to the Publisher full and exclusive right to act as his or her agent in disposing of the following rights and licenses: reprint, in full or in part; book club; serialization; dramatic, operatic, and musical adaptation; radio and television broadcasting; mechanical or electronic reproduction; microfilming and similar techniques; filmstrip production; motion picture and allied rights; and adaptations for commercial use.”

Why it could be problematic: Subsidiary rights are rights that arise from your copyright being used in specific contexts, such as for a movie adaptation or in audiobook form. The term above is especially problematic when you put it in context: This particular clause was found in a contract for a textbook. Is a textbook publisher realistically going to make or license an opera based on an author’s textbook? Authors should be skeptical of contracts that ask for subsidiary rights that the publisher really doesn’t need and is unlikely to exploit.

How to make it better: There’s no one clear way to make a subsidiary rights clause better. Instead, an author should consider and discuss with the publisher what subsidiary rights they each hope to realistically exploit. For example, if a publisher has no ties to the movie industry, but the author or his agent does, then the author could advocate to retain the rights to audiovisual works because the author can actually pursue the goal of getting a movie made. Authors can also limit the duration of these rights, ask for a license-back, or insert “use it lose it” provisions. To learn more about subsidiary rights, review pages 76-94 of Understanding and Negotiating Book Publication Contracts.

Rights Reversion

Sample Term 1: “If the Work (and all conversions, adaptations, ancillaries, derivations and portions thereof) has been declared out of print by the Publisher in the United States, the Publisher may, but shall not be obligated to, offer to reversion rights to the Work to the Author.”

Sample Term 2: “In case Publisher fails to keep the work in print (and for all purposes of this paragraph a Work shall be considered to be in print if it is on sale by Publisher in any edition in any venue, storefront or online, paper or digital […] then this Agreement shall terminate with respect to the Work and all of the rights granted to Publisher with respect to the Work shall revert to Author.”

Why it could be problematic: Reversion rights are important because they give an author the ability to regain control of her book from the publisher if certain conditions are met, such as sales or revenue dropping below a certain threshold or if the book falls out of print. One reason Term 1 is problematic because it leaves the decision of whether to return rights to the author in the sole discretion of the publisher: Even if the book is out of print, the author cannot trigger rights reversion unless the publisher agrees. Term 2 is problematic because the availability of digital versions counts as keeping a book “in print,” it’s possible that the book will never be declared “out of print” if the publisher makes an electronic copy available, even if it hasn’t been selling any copies.

How to make it better: Reversion rights should not be left entirely to the publisher’s discretion; instead, it is better for clauses to include a clear trigger for an author’s right to revert, such as a definition of “out of print” that is tied to concrete terms, like a minimum number of sales or revenue in a specified period. Additionally, it is preferable to eliminate the mere availability of electronic copies as sufficient for a book to be “in print;” again, it is better to link the definition of “in print” to a sales or revenue threshold, for example, rather than the mere availability in any form. To learn more about rights reversion clauses, read pages 231-43 of Understanding and Negotiating Book Publication Contracts.

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The examples of covered in this series are just that—examples. Every contract looks a little different, depending on the kind of publisher and the kind of book. Contracts will inevitably have many more clauses that aren’t covered in this series, such as outlining royalty rates or marketing terms. For a deeper dive into contract terms and options for negotiation, be sure to check out Authors Alliance’s guide to Understanding and Negotiating Book Publication Contracts.

Authors Alliance is grateful to Diana Buck, Copyright Intern, for researching and drafting this post.

Fagundes & Perzanowski on Abandoning Copyright

Posted May 19, 2020
Photo by Ben Cliff on Unsplash

Authors Alliance is grateful to Nicolas Charest, Copyright Research Assistant, for providing this review of an academic article proposing a legal framework to facilitate copyright abandonment.

In a new article, Abandoning Copyright, Dave Fagundes, Professor of Law at the University of Houston, and Aaron Perzanowski, Professor of Law at Case Western Reserve University, review the doctrine of copyright abandonment and suggest reforms to facilitate copyright abandonment and promote a richer public domain.

Copyright abandonment refers to the voluntary and permanent relinquishment of an owner’s rights in a copyrighted work prior to the expiration of the work’s copyright term. In general, an author abandons her copyright by forming an intent to relinquish her rights and engaging in an overt act reflecting that intent. Abandoned works become part of the public domain, free from copyright and available for anyone to use. Fagundes and Perzanowski propose that copyright law should facilitate the legal and administrative process of abandonment, suggesting that doing so would realign copyright law with the constitutional intent of incentivizing creation to enrich the public.

The authors acknowledge that abandoning copyrights prevents an author from extracting the economic value of a work that is derived from exploiting exclusive rights. In addition, an author who abandons copyright also gives up the ability to prevent uses to which they would object. However, the public welfare is greatly benefited as the work becomes freely available for anyone to access and use. As such, abandonment can encourage new creative production by making more “raw material” available for other creators to use in their own works, whether it be original creation or derivative works (the authors point to examples of multiple movie adaptations based on literary works in the public domain, such as Alice in Wonderland, Peter Pan, The Jungle Book, Sherlock Holmes, King Arthur, and Robin Hood).

Fagundes and Perzanowski criticize the current state of the law surrounding copyright abandonment: The lack of a clear, reliable way to abandon copyright frustrates authors who wish to abandon their copyrights, and the practical effectiveness of abandonment is undermined by the lack of a broadly accessible record of abandoned works. The Copyright Act of 1976 contains no explicit provision on how an author may opt out of copyright law’s grant of economic rights. They also highlight that although the U.S. Copyright Office records notices of abandonment, it does not indicate whether such recordation is legally effective in actually abandoning the copyrights. Finally, they point out that the doctrine of abandonment is ill-defined and courts are inconsistent in their rulings, often mixing abandonment with other doctrines such as forfeiture or waiver. They ultimately conclude that these shortcomings might discourage authors who would otherwise be inclined to abandon their works because the practice appears inaccessible.

In light of the above, Fagundes and Perzanowski propose the following:

  • Courts should clarify the standard for copyright abandonment and distinguish abandonment from other related doctrines.
  • Courts should favor clear written and oral statements of intent to abandon and narrowly interpret all other forms of evidence of intent, especially those based on the physical disposition of copies of a work.
  • Congress should amend the Copyright Act to specifically provide for the power to abandon copyrights and dedicate works to the public domain and to define a standard and associated mechanism for abandonment.
  • Congress could empower the Copyright Office to define a standard for abandonment and develop administrative mechanisms for evaluating, recording, and publicizing notices of abandonment. This filing process should be free.
  • The law should clarify the public domain status of works subject to private dedication instruments like Creative Commons’ CC0 license, and a complete and authoritative registry should be developed to search for abandoned works.

Fagundes and Perzanowski also consider strategies to bend the incentives of copyright owners towards abandonment.

The full text of the article can be found here.

New Empirical Study of Australian Publishing Agreements: A Case for Statutory Reversion Rights for Authors

Posted March 11, 2020
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Authors Alliance is grateful to Nicolas Charest, Copyright Research Assistant, for contributing this post.

New findings based on empirical research by Joshua Yuvaraj and Rebecca Giblin highlight serious deficiencies in publication contracts, especially with respect to provisions for returning rights to authors. In Are contracts enough? An empirical study of author rights in Australian publishing agreements, Yuvaraj and Giblin analyze 145 book publication contracts from the archive of the Australian Society of Authors and conclude that the contracts are generally not sufficient to protect authors’ interests in the long-term availability of their works. Given this, the authors propose introducing baseline minimum protections to improve author incomes, investment opportunities for publishers, and access for the public.

The United States and many other countries give authors statutory rights to terminate transfers of copyright (often called “reversionary” or “termination of transfer” laws). Among other benefits, these rights give creators the ability to give new life to works that have outlived their commercial lives but are nonetheless historically and culturally valuable. By getting rights back, authors can seek alternative distribution outlets, whether it be publication on new platforms, translation and distribution of works in new languages and in new territories, adaptation into movie scripts, or releasing works under a public license. Beyond statutory termination provisions, authors may also be able to regain rights through provisions in their publication contracts.

Since Australia does not give authors a statutory right to regain their copyrights from their publishers, Yuvaraj and Giblin’s new paper explores whether the provisions in the contracts they reviewed were adequate to protect the interest of authors to regain unexploited rights. Yuvaraj and Giblin conclude that provisions were generally deficient. Their observations include:

  • The Rights Assigned or Licensed to Publishers are Extremely Broad: Authors typically hand over overwhelmingly broad and long-lasting rights, with 83% of agreements covering the right to print, publish, and/or license the work for at least the entire copyright term, and 19% of those specifically include any future extensions of that copyright term. Most of these licences or transfers also secured the publisher’s rights over any and all territories, and almost half included rights in all languages.

  • “Out-of-Print” Clauses are Rarely Based on Objective Criteria: While 87% of the contracts examined had some form of out-of-print reversion clause, most relied on a “technical availability” standard to determine whether a rights in a work are eligible for reversion to the author. Only 7% of out-of-print clauses were based on objective criteria like the number of copies sold. A further 5% left the determination of out-of-print status entirely to the publisher’s discretion.

  • Authors Face Long Waits Before They Can Reclaim Rights: When reversion rights are provided in the agreements, Yuvaraj and Giblin observe that there are often built in delays before the author can revert rights. In the contracts analyzed by the authors, delays include: a period after initial publication (ranging from 1-7 years), a period after the book goes out of print (ranging from 6 months to 3 years), and a period of notice to the publisher to reprint the book (from 2 months to 2 years).

  • “Use it or Lose it” Clauses are Rare and Some Contracts Fail to Provide for Reversion in the Event of Liquidation: Just 6% of the contracts provided for the return of unexploited language and territory rights (“use it or lose it” clauses). A full 30% of the contracts failed to provide for reversion of rights to authors in the event of a publisher going out of business.

Yuvaraj and Giblin argue that in light of these findings, contracts cannot be relied on as the only way to protect authors rights and recommend that minimum reversion rights for authors should be include in copyright statutes. They suggest that lawmakers explore possible avenues for introducing new minimum reversion rights for authors, including 1) rights to revert where a book is no longer being meaningfully exploited; 2) use-it-or-lose-it rights; 3) a right to revert when the publisher enters liquidation; 4) reversion for failure to pay royalties or provide reasonably transparent royalty statements; and 5) reversion after a certain period of time.

Click here to access the full paper.

Reference: Yuvaraj, Joshua and Giblin, Rebecca, Are contracts enough? An empirical study of author rights in Australian publishing agreements (Nov. 19, 2019). Melbourne University Law Review, Vol. 44, No. 1, 2020.

Copyright Registration and Recordation 101

Posted February 11, 2020
Photo by Patrick Fore on Unsplash

If you have questions about copyright registration, you’re not alone! Authors often ask us why they should register copyright in their works and when and how to do so. Read on for a primer on the benefits of copyright registration, how to register your copyright, and situations where you may want to update or supplement the Copyright Office’s record of your work.

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Copyright registration is a claim to copyright filed with the Copyright Office which creates a public record of facts about a copyrighted work, including authorship and ownership information. Although authors do not need to register their works in order to enjoy the protection of copyright law (under today’s copyright laws, copyright protection for original, creative works is automatic), timely registration has several benefits which make it an advantageous practice. For example, registration establishes a public record of ownership, registration is necessary before initiating an infringement suit, and registration within three months of publication (or prior to infringement of the work) opens up the possibility of statutory damages and attorneys’ fees. Read more about why registration is an advantageous practice for authors in our post Why Register Your Copyright?

Copyright registration includes three essential elements: a completed application form, a filing fee, and a “deposit” (a copy of the work submitted to the Copyright Office). To learn about how to register your works with the U.S. Copyright Office, read our post How to Register Your Copyright.

While copyright owners no longer need to renew registration under U.S. copyright law, there are several situations in which updating or supplementing the Copyright Office’s record of your work is beneficial (or, in the case of termination of transfer, required). Learn more about filing a supplementary registration, registering derivative works, recording transfers or copyright ownership and other documents pertaining to copyright, and recording terminations of transfers in our post on When to Update or Supplement a Copyright Registration.

It is worth noting that as a part of the its modernization plans, the Copyright Office has announced a forthcoming pilot program through which participants will be able to electronically submit for recordation most types of transfers of copyright ownership and other documents pertaining to a copyright. (Notices of termination will not be part of the pilot program when initially launched.) We applaud the Office’s modernization efforts and will provide updates as the program develops.

Distinguishing Trademarks from Copyrights: A Q&A for Authors

Posted January 14, 2020

Authors Alliance is grateful to Nicolas Charest, Copyright Research Assistant, for researching and drafting this post.

There is longstanding confusion between trademarks and copyrights, which can sometimes lead to controversy in author communities. Notably, in 2018 an author sparked what came to be known as “CockyGate” after she registered a trademark for the word “cocky” in connection with her series of romance novels and asked Amazon.com to take down all romance novels with “cocky” in the title. The trademark application was later surrendered and cancelled following legal proceedings (more details here). More recently, another author sought trademark registration for the word “dark,” used in the titles of a series of her books, though she also later abandoned the application.

In light of these recurring issues, what should authors know about trademarks and copyrights, and how they might apply to their works? We’ve got you covered with this Q&A providing an overview of trademark rights and copyright and how these rights can arise in the publishing industry.

What are copyrights and trademark rights?

Copyright protects original works of expression and gives the author the exclusive rights to reproduce the work, to distribute the work, to prepare derivative works (like translations or movie adaptations), or to perform or display the work publicly. Each of these rights can be transferred by the author to a third party through an assignment or license.

A trademark is a word, phrase, symbol, or design (or a combination thereof) that identifies and distinguishes goods from one source from those manufactured or sold by others. Rights in a trademark are used to prevent others from using similar signs that would cause confusion to consumers in the marketplace, helping to avoid situations where products from another vendor would be mistakenly believed to come from the trademark owner or suggest such an association. The United States Patent and Trademark Office (“USPTO”), the federal agency responsible for the registration of federal trademarks in the U.S., has adopted the view that the title of a book cannot be registered as a trademark, but the title of a collection or series can. This is because the latter is more likely to identify a source of goods than the former.

Examples of trademarks from the publishing industry include the Penguin Group’s illustration of a black and white penguin on an orange background and the words “For Dummies” in a series of books from Wiley.

What is the purpose of copyrights and trademark rights?

While copyrights and trademarks are both intellectual property rights, they serve markedly different functions in the publishing world. In short, copyright controls the ways a work can be copied, distributed, and adapted, while trademark rights control the use of signs which have become distinctive to a particular author, series, or publisher.

For example, copyright protects the thirteen volumes of Lemony Snicket’s Baudelaire Orphan series, allowing the copyright owner to control the printing and selling of new copies of the books. A copyright owner’s rights are said to be “infringed” if someone exercises one or more of the copyright owner’s exclusive rights—by reproducing one of the books in the series, for example—without authorization or a copyright exception covering that use.

The trademarks “A SERIES OF UNFORTUNATE EVENTS” (TM Reg No. 2732326) and “LEMONY SNICKET” (TM Reg No. 5432563), on the other hand, give the trademark owner the right to prevent others from using these word signs in contexts that would cause consumer confusion as to the source or affiliation of the goods sold under the mark. This gives consumers assurance that books marked as being part of the “Series of Unfortunate Events” come from the author, Daniel Handler, publishing under the pseudonym Lemony Snicket, and indicates to potential readers that any books bearing the mark will be of the same literary quality and style as the other books in the series.

Trademarks are not limited to words. For instance, the exterior appearance of a collection of books can be a distinguishing sign that indicates a source and could be considered a trademark, over which the editor or publisher could claim trademark rights. Examples of such abound, including the recognizable layout of the paperback Penguin Classics collection and the Aspen Casebook Series, which the editor says is “famously known amongst law faculty and students as the ‘red and black’ casebooks.”

An author or publisher may wish to secure a trademark as an indicator of source to protect the goodwill created by the works of the author and to prevent other from usurping the reputation of the author.

How are copyrights and trademark rights obtained?

Under today’s copyright laws, copyright protection for original, creative works is automatic from the moment the work is “fixed in a tangible medium” (e.g., as soon as the author puts pen to paper, paintbrush to canvas, or saves a computer file). Although authors do not need to register their works in order to enjoy the protection of copyright law, registration with the United States Copyright Office has several benefits which make it an advantageous practice. Authors interested in the advantages of registering a copyright in their work can read our blog post Why Register Your Copyright.

“Common law” trademark rights can arise based solely on the use of a mark in commerce where it is used as source identifier over a period of time and consumers recognize the mark as indicative of the specific source. However, like copyright, there are significant benefits to registering the work with the USPTO, including: a legal presumption of your ownership of the mark and your exclusive right to use the mark nationwide on or in connection with the goods listed in the registration; public notice of your claim of ownership of the mark; listing in the USPTO’s online databases; and the ability to bring an action concerning the mark in federal court. Federal trademark applications can be filed on the basis of the mark being used in commerce in connection with the goods specified or on and “intent-to-use” basis. A registration of a trademark at the state level is also available, though the protection that it offers is limited to that state only.

How long do copyright and trademark protection last?

Under current copyright law in the United States, copyright lasts for the life of the author plus 70 years. Rights in a federally registered trademark can last indefinitely if you continue to use the mark and file all necessary maintenance documents with the USPTO. Common law trademark rights can continue as long as the sign remains distinctive.

New Report on Termination Rights for Authors

Posted December 10, 2019

Last week, Public Knowledge released Making Sense of the Termination Right: How the System Fails Artists and How to Fix It, a report that explores the right of authors to terminate a copyright license or grant and regain rights in their works—even if their contracts contain language to the contrary.

The termination system was designed to protect authors and their heirs against unprofitable or inequitable agreements. But the report argues it is failing to protect the very people termination was designed to serve: artists and creators. According to Dylan Gilbert, Policy Counsel at Public Knowledge and co-author of the report, “Unfortunately, numerous problems—from legal cost and complexity and imbalances of power to scarce public information—are combining to create dysfunction in the system, which appears to be preventing artists from effectively using their termination right.”

The report critiques the complex eligibility, timing, and filing formalities for termination, which are exacerbated by ambiguities in the law and its application. On top of the onerous procedural requirements, the report highlights power asymmetries governing the negotiation, assignment, and reversion of ownership rights that also harm authors—particularly creators of color—who seek to exercise their termination rights.

The report recommends six policy actions to help restore fairness and functionality to termination of transfer rights:

  • Revise the Copyright Act so that the termination right vests automatically;
  • Revise the Copyright Act so that the termination right vests sooner than 35 years after a grant of rights under § 203 or 56 years after the copyright is first obtained under § 304;
  • Eliminate or revise the “work made for hire” exception or statutory definition;
  • Mitigate the need for artists to litigate ownership disputes prior to exercising their termination right by revising the statute of limitations or clarifying that the mere act of registering an adverse claim with the Copyright Office is not an effective repudiation of an ownership claim;
  • Address derivative works issues through statutory clarification; and
  • Conduct a formal study on the exercise and administration of the termination right, including the effects of the termination right on contract negotiation and renegotiation.

Click here to read the full report for more details on Public Knowledge’s recommendations to improve termination rights for authors.

Authors Alliance and our partners have created tools to help authors unpack the complex termination provisions. To learn more about termination of transfer and how to evaluate whether a work is eligible for termination under U.S. law, authors can explore the Termination of Transfer Tool, developed by Authors Alliance and Creative Commons. Authors can also refer to Authors Alliance’s guidance and templates for how to provide notice of termination to rightsholders and record the termination with the U.S. Copyright Office.

New Resource on Law and Literacy in Non-Consumptive Text Mining

Posted November 19, 2019
Photograph of laptop computer
Photo by Andras Vas on Unsplash

Scholars are increasingly using text data mining to uncover previously unknown patterns, trends, or relationships from a collection of textual documents. In doing so, many of these researchers may be accessing, building, working with, and sharing materials without understanding the legal implications of their actions. In their newly released chapter, Law and Literacy in Non-Consumptive Text Mining: Guiding Researchers Through the Landscape of Computational Text Analysis (in Copyright Conversations: Rights Literacy in a Digital World), Rachael G. Samberg and Cody Hennesy analyze the legal issues that can arise when researchers are engaged in text data mining and provide guidance on how to approach these issues.

As Samberg and Hennesy write, “currently, many [ ] researchers programmatically access and download copyright-protected works—even when it potentially violates copyright, licenses, privacy, or computer fraud law—because it is technically feasible. Few of these researchers are malicious in intent; rather, they may lack the necessary training or support to safely navigate the obscure regulatory environment of the field.”

Samberg and Hennesy’s survey of copyright and other legal issues affecting text data mining addresses:

  • Copyright and Fair Use: Samberg and Hennesy review several cases where courts have considered the intersection of full text searching a corpus and fair use and found non-consumptive text mining to be fair. They caution that researchers should understand that while it may be fair use in some cases to create and utilize a database for text data mining, further publishing that database may exceed the bounds of fair use.
  • Contract Law: Samberg and Hennesy discuss how contract law may define how researchers can access materials and what use they can make of them, and may even supplant fair use rights. They review the effect of database license agreements, website terms of service, and agreements with archives and special collections on text data mining.
  • Ethics: Samberg and Hennesy consider the best practices in responding to requests from web hosts relating to scraping content from the site.

Samberg and Hennesy use this framework to define literacies for researchers based on three stages of outreach and education further articulated in the chapter: use of precompiled corpora, corpus creation, and corpus publishing. The authors conclude that the key literacy is for researchers “to understand the need for a workflow [ ] and to explore a tailored approach in consultation with their librarians.”

This chapter is a valuable contribution towards helping scholars using text data mining to acquire the skills they need to understand and approach the legal implications of their work. Law and Literacy in Non-Consumptive Text Mining: Guiding Researchers Through the Landscape of Computational Text Analysis is available to read in full under a CC-BY license.

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Thanks to a grant from the National Endowment for the Humanities (NEH), Rachael Samberg will lead a national team to help humanities researchers and staff navigate complex legal questions in cutting-edge digital research. The institute, Building Legal Literacies in Text Data Mining, will teach humanities researchers, librarians, and research staff how to confidently navigate the major legal issues that arise in text data mining research. Authors Alliance Executive Director Brianna Schofield will take part in the institute in her capacity as a copyright expert. A call for participants is currently open; applications are due December 20, 2019.

Rights Reversion: Opening Classic Works to New Global Audiences

Posted November 12, 2019

We are grateful to Anita Walz, Assistant Director of Open Education and Scholarly Communication Librarian at Virginia Tech, for sharing the following rights reversion and open access success story. Anita worked with the authors of an out-of-print textbook to make a digitized version available online under a Creative Commons license for a new generation of students—not only at Virginia Tech but around the world. This guest post is published under a CC BY-NC-4.0 license.

“I want to assign this book as required reading for my graduate class. However, there are 125 students and I can’t find enough copies for students to access, borrow, or purchase. You’re a librarian. Can you help?”  Librarians often field such inquiries. Depending on the situation, such inquiries may lead to nuances of copyright, ebook acquisition, a search for substitute titles, assertion of fair use and exploration of more ideal scenarios: open access works and open educational resources. Sometimes such inquiries lead us outside of libraries to fact-find with authors and publishers on behalf of library users. The example of Veterinary Epidemiology: Principles and Methods is one such case.

In 2015 and 2016 I worked on my first rights reversion digitization project, inspired in part by the Authors Alliance’s publication Understanding Rights Reversion: When, Why & How to Regain Copyright and Make Your Book More Available. Of course, I didn’t know that it was a rights reversion scenario when I first started. A new faculty member had approached me with a copyright quandary: She wanted to use an out-of-print seminal work from 1987 for her class of 125 students. The six copies owned by the library and the several used copies available for sale would not be nearly enough. A thorough check indicated that a digital version was not available for purchase. We also explored working with the Copyright Clearance Center, but the cost was exorbitant. Wanting to honor the professor’s selection of this particular text, my colleagues and I aided her in conducting an informed fair-use analysis and the library displayed selected chapters one-chapter-at-a-time via the library’s secure eReserve system. With the book obviously out of print, and wondering who owned the rights, I contacted the book’s authors in September 2015.

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My Publisher Agreed to Revert Rights: Now What?

Posted July 23, 2019
Photo by Javier Allegue Barros on Unsplash

Since we first published our guide to Understanding Rights Reversion in 2015, our rights reversion resources page has been a one-stop shop for authors seeking the information they need to get back the rights in their works.

Rights Reversion CoverFor those who are new to the concept of rights reversion, the guide is a good place to start. It explains what rights reversion is, how it benefits authors and readers, and how to go about reverting rights. For authors who already know that they wish to pursue reversion, the resource page features guidance and letter templates that authors can refer to when contacting their publishers to request a reversion of rights. The resource page also highlights the success stories of authors who have regained their rights in order to release their works under open licenses, make their works available as low-cost e-books, repackage a book series, or even place their works with a new publisher.

Over the years, our members have reached out to ask for more information about what happens at the point when a publisher agrees to revert rights. In this post, we’ll cover:

  • Getting the files and permission you need;
  • Understanding and tracking ongoing obligations related to your work;
  • Purchasing your publisher’s inventory of your work; and
  • Updating the Copyright Office’s records with new ownership information.

Getting the Files and Permission You Need

When reverting rights, it is helpful to ask your publisher for both the physical materials and any the intellectual property rights you may need for future printings. In fact, some publishers are required by the terms of the publishing contract to provide authors with these items. The items that you may need include not only the digital design files and rights for the text you created, but also the files for art and other materials created by third parties, as well as the permission to use these items if permission is required.

For example, authors who want to reuse the same cover art when they make their reverted books newly available may need to acquire both the source files and a copyright license to reuse cover art that was created or commissioned by their publisher. (Of course, when it applies, authors may also rely on fair use to incorporate third-party works in their works.)

Understanding and Tracking any Ongoing Obligations

Your publisher may have other obligations to fulfill after the reversion. It may, for instance, still need to make royalty payments for sales accrued before the reversion or from other sales or licenses that are still ongoing. As you finalize your reversion, it is important to understand your publisher’s accounting cycle and ask for clarification if you are unsure how and when your publisher plans to account for past or ongoing sales.

Importantly, authors who regain rights need to understand whether any outstanding licenses to their works are still in place and how these licenses will be treated. For example, if an author’s publisher has licensed the French translation rights to her book to another publisher, she will want to know whether the license is exclusive or nonexclusive, whether the license survives the reversion, and whether she can expect any ongoing royalties or other payments for the license. If the license is exclusive and survives the reversion, the author’s reversion is subject to that license. This means that she cannot make and sell French translations of her book without violating the other publisher’s exclusive rights. But she may have ongoing royalties for the sales of the French translation, which she should be sure to track.

Purchasing Your Publisher’s Inventory

If your publisher has any remaining copies of your book in stock, you may consider offering to purchase the remaining inventory. In fact, some contracts give authors the right to purchase stock at the time of reversion at cost. This gives authors the opportunity to purchase these copies at a discounted price in order to sell or otherwise share these copies.

If you are not interested in purchasing copies, or your publisher does not want to sell them to you, it is still a good idea to find out how many copies the publisher has left in its inventory. Often, publishers explicitly retain the right to sell their existing inventory in reversion agreements, subject to continued royalty payments to the author. If you know how many copies the publisher has in stock, you can better understand and track any royalties due from these sales.

Updating the Copyright Office Records with New Ownership Information

Last but not least, after reversion, authors should consider updating the U.S. Copyright Office’s records with their works’ new ownership information. The records held by the U.S. Copyright Office will likely list your publisher as the copyright owner (“claimant”) and/or the point of contact for permission to use the work. After reversion, it is up to you (as the new owner of the copyright) to update this information.

Fortunately, new copyright owners can record a transfer of copyright with the Copyright Office to update these records. Updating the Copyright Office’s records after you revert rights establishes a public record of your new ownership rights. This will make it easier for future users to find accurate information about the current ownership status of your work. When people know whom to contact for permission, it can help increase the dissemination of your work, and potentially your compensation if you license paid uses.

A transfer of copyright can be recorded by submitting a signed or certified, complete, and legible copy of the document being recorded (such as a rights reversion letter from your publisher) to the Copyright Office, together with the required fee (currently $105 for a single title) and Form DCS cover sheet. If accepted, the Register of Copyright will record the document and issue a certificate of recordation. As of July 2019, the processing time for recording transfers or other documents related to copyright is 9 months. For more information on recording transfers of copyright ownership, see Copyright Office Circular 12: Recordation of Transfers and Other Documents.

If you want to know more about how to get your rights back, check out the digital or print version of our guide to Understanding Rights Reversion. For guidance on self-publishing following a reversion of rights, see How Traditionally Published Authors Can Repackage and Self-Publish Their Backlist by author Jess Lourey.

If you have questions about rights reversion you’d like to see Authors Alliance address, send a message to reversions@authorsalliance.org.