Showing posts with label copyright infringement. Show all posts
Showing posts with label copyright infringement. Show all posts
Friday, October 26, 2012

Faulkner Quote in "Midnight in Paris" Sparks Lawsuit

The past is not dead! Actually, it's not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party.” 
                                                       -- Wood Allen's "Midnight in Paris"
The above quote from William Faulkner's "Requiem for a Nun" was used in Woody Allen's "Midnight in Paris" (2011) without permission.  It has sparked a copyright and trademark infringement lawsuit.  As reported by The Hollywood Reporter, the suit was filed with the U.S. District Court in Mississippi on Thursday. In the movie, Gil Pender (Owen Wilson), who utters Faulkner's words, is a successful Hollywood screenwriter who, to quote The New Yorker ,"considers himself a hack," someone "struggling to write a novel, a dubious-sounding story about a man who lives in the past."

The dialogue is categorized in the complaint as both an "infringing quote" and "likely to cause confusion, to cause mistake, and/or to deceive the infringing film's viewers as to a perceived affiliation, connection or association between William Faulkner and his works, on the one hand, and Sony, on the other hand." 

A good case can be made for fair use of the borrowed language.  The studio, if it wishes to litigate the matter, would argue that the screenwriter didn't lack imagination.  Allen wasn't padding the script or regurgitating Faulkner. He was bringing new insight to Faulkner, and the words quoted.  Among other things, William Faulkner is cultural shorthand for the struggling novelist who turns to Hollywood for fame and fortune. Gil called himself a Hollywood hack.   Faulkner called himself a failed poet who took up the novel.  Point.  Counterpoint. Gil's struggle is the inverse of Faulkner's.  How can we learn anything about ourselves if we can't quote enough to make a larger point about the human condition?  Put another way, the word "Faulkner" packs a lot of meaning. The motive for quoting Faulkner matters. It was to make a larger point -- not steal bread from the mouths of Faulkner's orphan children.    

Okay, but the Faulkner orphans might still wonder why Congress would allow Allen to borrow (steal?) their
literary property - but not their feeding bottles or bonnets?  Fair use allows scholars, researchers and others to borrow or use small (and sometimes large) portions of in-copyright works for socially productive purposes without seeking permission. The doctrine -- which complements the First Amendment -- helps courts avoid rigid application of copyright law where rigid application would "stifle the very creativity which the law is designed to foster." Against this backdrop, fair use can be looked at as a balancing act. It is an imperfect attempt to reconcile the competing ideals of free speech with the property rights of individual creators. Fair use recognizes that the reason for our nation's copyright laws is not so much for individual creators, but, rather to promote the progress of art and science.

Regarding the trademark claim, more likely than not it would be dismissed on a motion for summary judgment.   Arguably, it's not a trademark use. It's a passing reference in an artistic work to another artistic work.  Artistically relevant references to cultural icons, whether dead novelists or consumer products, are often protected under the First Amendment. They call it the Rogers artistic relevance test or exception. Ginger Rogers once tried to stop a movie that included her name in the title.  The movie was Fellini's satire "Ginger & Fred," which concerned two retired small-time dancers who were known as Ginger and Fred.  When Ginger Rogers learned of the film, she claimed the movie falsely implied she endorsed it - a violation of Section 43(a) of the Trademark Act. Affirming the trial court, the Second Circuit Court of Appeals held that, provided, a celebrity's name has some reasonable "artistic" relationship to the content of the work, and is neither "explicitly" misleading, nor a thinly veiled commercial advertisement, the slight risk that the celebrity's name might implicitly suggest endorsement or sponsorship, may be outweighed by the public interest in free expression. 

In the context of a recent blog on the HathiTrust ruling, I commented that when suing you have to keep in mind the "clear" purpose of copyright. Copyright may be called a "monopoly," but private reward must be balanced against the public good.  Based on what I know, my money is on Mr. Allen and Sony Pictures. 

Wednesday, December 28, 2011

The Battle Over Ebook Rights to Older Books

The Court Battle that Could Determine the Fate of the Book Industry:A Review & Analysis (Updated)

The picture of publishing economics has changed dramatically.  Since the middle of 2011, Amazon has been selling more eBooks than hardcover and paperback books combined.  What this trend makes clear, is it is becoming increasingly difficult to publish a book profitably based solely on bound book sales.  This article looks at HarperCollins' recently filed lawsuit against eBook publisher Open Road and the role legacy publishing contracts and contract ambiguity play in the battle over lucrative eBook rights.   

Let us consider HarperCollins’ legal position that the term “in book form” in a pre-Internet age contract includes eBook rights -- a technological achievement that wasn't invented when the contract was signed.  By way of background, the publisher filed a complaint in the United States District Court for the Southern District of New York on December 23, 2011, against eBook publisher, Open Road Integrated Media.  Open Road, founded by Jane Friedman, former CEO of HarperCollins, publishes eBook versions of print books otherwise controlled by major publishers.  In its complaint, HarperCollins seeks damages and injunctive relief against Open Road because Open Road intends to publish an eBook edition of Jean Craighead George’s YA classic, Julie of the Wolves

In its complaint for copyright infringement, HarperCollins argues that its contract for Julie of the Wolves, a book first published in 1972, gives it the sole right to publish George’s novel in eBook form. It bases its argument on its interpretation of the term “in book form,” which it argues encompasses eBook rights. 

Old Wine in New Bottles

By filing its complaint, HarperCollins follows a well-established pattern in the entertainment industry. Cases addressing whether older entertainment industry contracts granted rights for new uses such as player piano rolls, radio, motion pictures, television, and videocassettes are plentiful. Like HarperCollins, motion picture studios once claimed that they already had the right to exhibit films on television, and to distribute them as home videos.

When a contract is ambiguous, the job of ascertaining the parties’ intent is left to the courts. To determine the parties’ intent, a court will consider the precise language of the grant (e.g., the existence of any “future technologies” clause, the inclusion or exclusion of a “reserved rights” clause), whether the parties contemplated “new uses” when the contract was entered into, and the sophistication of the parties. Since contracts are not drafted in a vacuum, courts may also look at industry practice. What this case makes very clear is that a contract is a private body of law between two parties.   Ideally, a contract between an author and publisher anticipates potential problems by clearly setting down in writing both parties rights and obligations.  If done properly, future readers of that contract will be able to discern what was intended.

Tesla's Original eBook
Most likely, the court will ask whether the distribution of books in digital form was recognized by knowledgeable people in the publishing industry in 1972.  The court will also analyze the contract to see if there are any provisions that tend to limit the “exclusive right to publish . . . in book form." If the court finds there is no clear intent – which is often the case in dealing with a later-developed technology -- the court may decide the matter based on social policy considerations.[1] That is when the intent of the parties -- the Holy Grail in contract interpretation -- cannot be ascertained, courts apply “off the rack” rules to decide what they feel the proper result should be. In other words, if there’s no Rosetta Stone to help decipher the parties’ intent, the court will decide the matter for the parties

New York courts have adopted one rule of contract interpretation that favors large entertainment companies.  The rule states that if there’s a broad and general grant of rights, an ambiguous grant will be interpreted to apply to technologies that were known at the time of the grant. The seminal case for this proposition is Bartsch v. Metro-Goldwyn Mayer, Inc.2

Bartsch involved an agreement entered into in 1930, in which plaintiff’s predecessor in interest granted Warner Bros. Pictures, all of its motion picture rights in a popular musical play.3 The issue in Bartsch was whether a grant of motion picture rights included the right to broadcast the film, based on the play, on television. The court focused on the grant of rights to “copyright, vend, license and exhibit . . . the motion picture photoplay throughout the world.” In holding that the grant did include television rights, the court observed that “if the words are broad enough to cover the new use, it seems fairer that the burden of . . . negotiating an exception should fall on the grantor,” at least when the new medium is not completely unknown at the time of contracting.4

Notwithstanding Bartsch, which can be limited to its facts (a film producer's expectations are different than a book publisher's or author's expectations), when a contract is susceptible to two reasonable interpretations, with each party knowing or having reason to know of the other party's understanding of the term, courts, as a policy matter, will often construe the agreement against the party that drafted the contract. The Restatement (Second) of Contracts states that an agreement susceptible to more than one interpretation should be construed against the party who drafted the language.5 Here, since, HarperCollins was in a stronger bargaining position, the the burden of negotiating new ways to exploit their exclusive rights, should have fallen on them.6 If the court follows the Restatement, as opposed to the Bartsch line of cases, it would appear, then, that unless the author's representative had an equal hand in drafting the agreement, which is almost never the case, the contract should be interpreted in the light most favorable to Ms. George, and, in turn, Open Road.  

When an agreement is equally susceptible to either interpretation, the author or grantor often wins.7 
 In Cohen v. Paramount Pictures Corp, the 9th Circuit Court of Appeals held that “television viewing” and “videocassette viewing” were not “coextensive” terms.8  And, that a license that included the right to exhibit a film on TV did not include the right to distribute the film on home video.  In resolving this “old wine in a new bottle” dilemma , the court placed primary emphasis on the fact that videocassette recorders were not invented when the license was signed.  Focusing on the means by which videocassettes were viewed and distributed (i.e., by sale or rental), the court emphasized that exhibition of a film on television differed fundamentally from the exhibition by a videocassette record/player.9 A similar argument – persuasive or not – can be made for printed books sold in bookstores, and eBooks downloaded and displayed on a screen.  eBooks were neither invented nor reasonably foreseeable when the HarperCollins contract was signed. 

Future Tense Publishing

Where things get interesting, is the impact of HarperCollin’s “future technologies” or “now known or hereinafter” clause.   Here the book publisher’s claim seems stronger, although, not all courts have enforced these provisions.  For example, in Tele-Pac, Inc. v. Grainger, the court held that the license to distribute films for “broadcasting by television or any similar device now known or hereinafter to be made known” did not encompass videocassette rights.10 The Appellate Division of the New York Supreme Court, rejecting the lower court’s attempt to equate broadcasting with the grant of videocassette rights, held that distribution of a film by videocassettes was not analogous to broadcasting by television. 

If the Southern District of New York adopts the Tele-Pac analysis, it could determine that “in book form” does not encompass eBooks.  Just as broadcasting by television is not analogous to the sale of videocassettes, distribution of physical books is not analogous to the sale of downloadable eBooks.  That is, a plausible argument can be made to suggest eBooks and bound books are two distinct media. Whereas a book is a book, an eBook -- whether downloadable or accessible from a cloud -- is a community.   If the batteries run low on your Kindle, Nook, or smart phone, the screen goes black, and your ability to link beyond the book is lost. Unlike an ad supported Kindle, or Nook you can synch with various electronic devices, bound books are low tech, and can survive fire and ice.  Run an iPad below 32 degrees, or above 95, and it's likely to shut down, whereas, legible writing on papyrus over two thousand years old has been rescued from the fiery ruins of Pompeii.  When it comes to fire and ice, tree-based books trump plastic and silicon-based readers.   And, have you ever tried to read an iPad in the sunlight?  

There are other arguments – some favor HarperCollins' interpretation while others would support Open Road.  Richard Curtis, for example, in an excellent piece on his eReads blog, addresses the significance of the phrase “Computer Storage and Retrieval” found in many legacy contracts.  It’s a solid piece of reporting and legal analysis. 

Good Contracts Make Good Neighbors

While HarperCollins pleads only one count of copyright infringement, the complaint also raises breach of contract and state law unfair competition claims.  Reference is made to a provision in George’s contract that requires HarperCollins to ask George to consent to the license of “computer, computer-stored, mechanical or other electronic” rights.  It's unclear if this provision supports the publisher or Open Road.  If the publisher is incapable of exploiting these rights without the author's prior approval, does HarperCollins possess an exclusive right or something less?   What exactly is this evidence of?  What distinguishes this case from other "old contract - new technologies" cases is the complaint states that George’s ability to withhold consent, does not give her the ability to grant a third party the right to publish an eBook edition.   A court could reason that since neither the 1972 advance paid for the book, nor the P&L for the book, placed any value on eBook rights, the publisher did not bargain for those rights.  The significance of the case, however, is the exploding market for eBooks and the very real danger Open Road, and others, pose to old school print publishers.  That danger recognized in several places in the complaint, but no more poignantly than in paragraph 29:   

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 June of the Wolves as an e-book.  Open Road is understandably content to allow HarperCollins to have made its considerable investments in the Work, only now to reap where Open Road has not sown, by seeking to divert sales of the Work from HarperCollins in the rapidly expanding e-books market.

HarperCollins’ attorneys may be accused of trying to stretch the definition of “in book form," but, it is harder to take issue with the proposition that a publisher should be able to protect its investment in an author’s work. While the grant of primary rights does not mention eBook rights, the court may find it unfair for Ms. George to collect royalties from her print publisher, while, at the same, time enjoying a royalty stream for the same work from Open Road.  However, there’s scant case law on the enforceability of non-compete clauses found in publishing contracts.  Even in the absence of a non-compete clause, there is an implicit duty in every publishing agreement that neither party will do anything that will destroy or injure the right of the other party to enjoy the benefits of the contract.11 While this doctrine is riddled with exceptions, is not without force.12

A Battle Over Words on Paper Will Determine the Digital Future

Because many in the book trade were not thinking about future technologies that would enable readers to license or purchase digital books, old contracts are being dusted off and ambiguous language scrutinized by lawyers like myself to answer the question, “Who controls eBook rights?”  In the case of pre-Internet contracts, author and publisher often ascribe different meanings to the phrase “in book form.”  Where the grant of rights can be interpreted in more than one way, it can lead to disputes, and, in the case of Jane Friedman’s Open Road, expensive and distracting litigation. 

Depending upon how the case brought by HarperCollins is decided, or resolved, the big six New York-based, publishers (and their cousin to the north, Harlequin) could either score a copyright and unfair competition protection windfall, or meet their digital Waterloo.  Only time will tell. 

Update:  On March 14, 2014 a New York federal judge handed HarperCollins a decisive victory, holding Open Road infringed HarperCollins's exclusive right to publish Ms. George's Julie of the Wolves in eBook form.   What distinguished this case from the Rosette Books' decision was the wording of the contract.  Here, the grant of rights ("the exclusive right to publish . . . in book form") was a broader grant than that found in the Random House contract ("to  print, publish and sell").  What further distinguished the HarperCollins' agreement from the Random House agreements, was non-boilerplate language inserted by Ms. George's forward thinking literary agent which afforded the author approval over the licensing and sub-licensing of, among things rights by "electronic means now known or hereafter invented."
Anything to the contrary herein notwithstanding, the Publisher shall grant no license without the prior written consent of the Author with respect to the following rights in the work: use thereof in storage and retrieval and information systems, and/or whether through computer, computer-stored, mechanical or other electronic means now known or hereafter invented and ephemeral screen flashing or reproduction thereof, whether by print-out, phot[o] reproduction or photo copy, including punch cards, microfilm, magnetic tapes or like processes attaining similar results, and net proceeds thereof shall be divided 50% to the Author and 50% to the Publisher. However, such license shall not be deemed keeping the work in print once the work has gone out of print in all editions."

While the contract contained an author-friendly reserved rights clause ("[a]ll rights in the Work now existing, or which may hereafter come into existence, not specifically herein granted" are reserved to the author), it was the language Ms. George's literary agency negotiated that swayed the court in HarperCollins' direction.  Citing a rule of contract interpretation that states "contract provisions are generally to be construed against the drafter," the court pointed out that the above amendment was "inserted verbatim into the contract at the request of Ms. George's agent."  Because the suit was filed against Open Road, technically, I  can't say that Ms. George was hoisted by her own petard, but, you get the point.   

Relying on the pro-publisher "new use" Bartsch case discussed above, applying so-called  "neutral principles of contract interpretation," the court reasoned that "[i]f the contract is more reasonably read to convey one meaning, the party benefitted by that reading should be able to rely on it; the party seeking exception or deviation from the meaning reasonably conveyed by the words of the contract should bear the burden of negotiating for language that would express the limitation or deviation."  That, plus a forward looking "future technologies" clause - and specific references to exploitation by "electronic means" -- cinched it for HarperCollins.   

Additional take aways:  Reserved rights clauses are not all they are cracked up to be - especially if there's a grant of electronic rights to be found elsewhere in the contract.  Absent an express grant of eBook rights in the main granting clause, a grant of electronic rights found in the subsidiary rights section should not be considered surplusage or useless language.  Further, if you wish to argue "that  foreseeability at the time of the grant is required to extend a copyright to a new use," you can't turn a blind eye to the future technology clause lurking within.   Also, there's a plausible argument that electronic publishing has been contemplated by both authors and publisher for well over one hundred years.  Ironically, in 1900, Harper Brothers, HarperCollins' predecessor-in-interest, offered Mark Twain a handwritten contract which was anticipated books sold or displayed by electronic means.  The contract, for his autobiography, which was to be published "100 years hence." specified that the book would be issued by Harper Brothers "in whatever modes should then be prevalent, that is by printing as at present or by use of phonographic cylinders, or by electrical  methods, or  by any other other method which may be in use."  So, 114+ years ago, Mark Twain signed a letter agreement granting Harper Bros. the right to publish his memoirs in electronic book form.  Foreseeable?  You decide.   

1See Dolch v. Garrard Publishing Company, 289 F.Supp. 687 (S.D.N.Y. 1968) (exclusive right of publication of books” held to encompass right to publish in paperback form). But see, Field v. True Comics, 89 F. Supp. 611, 614 (S.D.N.Y. 1950) (“the sole and exclusive right to publish, print and market in book form” did not include the right to publish the work in “comic book” form).
2 Bartsch v. Metro-Goldwyn Mayer, Inc., 391 F.2d 150 (2d Cir.1968), cert. denied, 393 U.S. 826 (1968).
3 Id at 152
4 Id. at 154.
6 See, e.g., US Naval Inst. v. Charter Communications, Inc., 875 F.2d 1044,1050,1051 (2d Cir. 1989) (interpreting ambiguous copyright grant against party preparing agreement); See, also, Rey v. Lafferty, 990 F.2d 1379, 1390 (1st Cir.) (ambiguity should be construed against drafter-grantee, especially given relative expertise of parties), 67 Wall Street Co. v. Franklin National Bank, 37 N.Y.2d at 249, 333 N.E.2d at 187, 371 N.Y.S.2d at 918; Rentways, Inc. v. O'Neill Milk & Cream Co., 308 N.Y. at 348, 126 N.E.2d at 273-74.
7 Cohen v. Paramount Pictures Corp., 845 F.2d 851,854 (9th Cir. 1988).
8 Id. at 854.
9 Id. at 853,854.
10 Tele-Pac, Inc. v. Grainger, 168 A.D.2d 11,13, 570 N.Y.S.2d 521, 522 (1st Dep’t 1991), appeal dismissed, 79 N.Y.2d 822, 588 N.E.2d 99 (1991).
11 Van Valkenburgh v. Hayden Pub. Co., 30 N.Y.2d 34, 281 N.E.2d 142, cert. denied, 409 U.S. 875 (1972).
12 See Wolf v. Illustrated World Encyclopedia, 34 N.Y.2d 834, 316 N.E.2d 342, 359 N.Y.S.2d 59 (1974) (author can license same illustration to another publisher absent a contractual prohibition against doing so).

Saturday, September 4, 2010

Ask a Lawyer: Do I Need an Interview Release?

["Ask a Lawyer" appears in The Huffington Post. The "Q" to my "A" is  Jeff Rivera, a journalist who reports on publishing and entertainment trends and personalities.]

Q: I'm writing a book based on interviews I've done with political leaders, writers, actors, and other prominent people. Do I need written permission? What can I do to avoid being sued for libel?

A: What can go wrong if you don't have a signed release? Leading the parade of horribles are
claims for defamation, false light invasion of privacy (a misleading implication that the average person would find highly offensive), and breach of contract.   
If you choose to forego a release, free speech, fair use, and implied consent defenses may insulate you against specific claims. However, because of the legal what-ifs, the ill-defined boundaries of implied consent, and the fact public figures are known to have large egos, deep pockets, and lawyers on speed dial, the best practice is to obtain a release.  
A well-drafted release will cover more than just permission to use a person's name and statements. For example, a release can potentially sidestep a lawsuit alleging alterations made to the speaker's words have tarnished their reputation. This is especially helpful when the individual is not a public figure and the statements do not concern a matter of public interest. 
Another potential problem a release can prevent is a disgruntled interviewee's attempt to revoke their consent or demand certain statements be deleted. The drafter of a release will want the unambiguous right to use the individual's name, voice and likeness to promote the interview. A release may include an indemnification clause that shifts liability from the publisher or podcaster to the interviewee. If the interview can be edited at the publisher or podcaster's discretion, the interviewee might try to exclude any editorial changes made without their consent from the indemnity.

Here's a link to sample interview releases
Spoken Releases
Did I hear you say, "What self-respecting political leader, bestselling author, or celebrity would sign an interview or guest appearance release? Excellent point. While less effective than a signed release, you can record the subject's consent. Provided the scope of rights is clearly defined, it's a viable alternative.  
While recording, before the interview starts, state the interview date and the interviewee's name. State clearly that the interview may be edited and used in all media, in whole or in part, in all languages throughout the world, in perpetuity. Then ask if you have their permission to record the actual interview and their answers to your questions. 
Of course, the law will hold you to your promise if the interviewee limits how or where the interview may be used. 
The Parade of Interview Horribles
Infringement and Libel Lead the Parade of Horribles
Copyright. Will the interviewee claim ownership of the interview? Some copyright scholars posit that the interviewer and interviewee jointly own the interview. To quality as a joint work, the interviewer (or podcast host) and the interviewee must agree that they will each own the interview. But that's not how things usually work in the real world. Most interviews do not qualify as joint works under the Copyright Act. In the rare instance an interview qualifies as joint work, either co-owner can issue non-exclusive licenses without the other's consent, subject to a duty to account for any profits made. 

The Copyright Office believes that an interview consists of two separate copyrights. That is right. They believe it consists of two separate copyrights - the interviewer and interviewee each owns the words they spoke. It's an interesting theory but of little practical value to the interviewer. Another legal theory is that the interviewer owns how the questions and answers are selected and arranged. In other words, the interview as a whole. So, who owns the interview? There's no bright-line rule. That's why it's a good idea to get it in writing.  

Libel, Privacy, Publicity. Without a signed release, writers, publishers, and podcasters are vulnerable to being sued for defamation and, a lesser threat, invasion of privacy. 

Libel is a false statement about a living person (business or group) that harms their reputation. Truth is a complete defense to a libel claim. Where the plaintiff is a celebrity or public figure, the plaintiff must show that the false statement was made with reckless disregard for the truth (aka actual malice). While a celebrity or other public figure may have difficulty winning a libel suit because of the legal actual malice standard, written consent is the best defense. If you transcribe accurately and can locate the recording or release, you've taken significant steps to minimize the risk of a successful libel suit. 
The right of publicity is the right to control the commercial exploitation of a person's name, likeness, or voice. However, the use of a celebrity's persona without their permission is generally protected under the "newsworthy" exception, provided it's related to the use and is not expressly misleading. The "newsworthy" exception applies not just to hard news but also matters of legitimate interest to the public, including sports, entertainment, and politics. In some states, a deceased person's right of publicity survives their death and may pass by will or be assigned.  

If you don't obtain consent, the advantage of interviewing a celebrity is that the First Amendment makes it difficult for a celebrity to bring a successful claim for invasion of the right of publicity and libel.   

The gold standard is a well-drafted written release. Document signing apps like DocuSign and Adobe Sign are simple e-signature solutions. Today we're habituated to clicking OK boxes without much thought. So, getting a release signed need not be a burdensome task.
Fair Use
If the ownership issue can't be resolved conclusively, you may be able to roll out the fair use defense. But it's a partial solution. For example, it may not allow you to publish an entire interview.

Fair use allows writers, podcasters, and others to copy (usually) small portions of in-copyright works for socially productive purposes without permission. Finally, as a defense to copyright infringement, fair use allows courts to avoid rigid application of copyright law where the strict application would "stifle the very creativity which the law is designed to foster."

Unfortunately, fair use is not amendable to mechanical rules. The fair use test takes into consideration or weighs four factors: (a) the purpose and character of the use, including whether the use is primarily commercial; (b) the nature of the copyrighted work; (c) the amount and importance of what's used in relation to the original work; and (d) if the use supersedes a market for the original?

Media Liability Insurance

If the subject matter is sensitive and you don't have a signed release, given the murkiness of the law, media liability insurance is something to look into. It's a specialized form of insurance that covers claims of copyright and trademark infringement, invasion of privacy, defamation, and other contextual errors and omissions. Some policies even cover claims of misappropriation of ideas and negligent publication. Most of these policies also cover defending a lawsuit, including attorney's fees and court costs. 

 #  # # 
I Shall Be Released, performed by Bob Dylan
Image:  Parade of Horribles and Antiques, Portland, Maine
Photographer:  Unknown
Year:  1920
Credit: Main Historical Society

Wednesday, March 3, 2010

Author's Guide to Copyright Clearances and Permissions

You hate clearing permissions.   After all, they are time consuming and expensive.  However, some types of use don't require permission.  If you answer yes to any of the following questions, you may not need permission.   
(i)  Is the material is in the "public domain" (i.e. out of copyright)?

(ii)  Is the material is uncopyrightable (e.g., unadorned ideas are common property)?

(iii) Is the work subject to a "Creative Commons" license?

(iv) Is the use a fair use?
This checklist is explained in greater detail below.  

Of course, if you are unsure whether a work is protected by copyright, or other intellectual property laws, seek legal advice or obtain permission. 
If you plan to make use of a work that does not fall within these four safe havens, then you must obtain a license or permission from the owner of the work. Begin the process early. Locating rights holders is not always easy, and negotiating rights and permissions takes time. 
Public Domain (Expired & Forfeited Copyrights)
Copyright protection does not last forever. That is why copyright is often called a "limited monopoly.” When copyrights grow old and die, the work they protected falls into the public domain. 

Duration depends upon a number of factors, including, the date of publication, and the date of the author's death.  Literary and artistic works published before 1923 are out of copyright in the United States, and can be used (subject to the below provisos) without permission.    
For works created after December 31, 1977, the duration of copyright is 70 years after the author's death.  For works for hire created after December 31, 1977, the duration of copyright is 95 years after publication. 

For works published between 1923 and 1977 the term of copyright is 95 years from initial publication.   However, special rules apply to works created or published before 1978.  Before 1964, copyright owners were required to renew their copyrights during the 28th year of copyright.  If the owner failed to renew, their copyright was forfeited.  A tremendous number of works entered the public domain because renewal was not made during the 28th year.  The renewal scenario requires a further qualification.  If the public domain work you wish to use is based on a work that is still in copyright, you can't use that work without the permission of the underlying rights owner.  For example, while the owners of the motion picture "Rear Window" forfeited copyright by failing to renew during the 28th year, the owner of the underlying work, a short story by Cornell Woolrich, renewed the copyright of the short story.  Since the copyright in the film only extended to the new material added by the producer of the film, the owner of the copyright in the short story was able to stop unauthorized distribution of the film.   Similarly, failure to adhere to the notice requirements could toss a work into the public domain.  Before 1988, publication without a proper copyright notice could also invalidate the copyright.

Subject to certain exceptions, public domain works may be freely copied and used in the creation of new works without permission, or authorization, of the former copyright owners. 

Public Domain Traps & Pitfalls

Copyright is not the only form of legal protection for creative works. Although a work may be in the public domain for copyright purposes, rights to the material may be protected under other legal theories such as: trademark or unfair competition laws (which protect against confusingly similar usage by another); the right of privacy (a person's right to be left alone); the right of publicity (an individual’s exclusive right to benefit commercially from his or her name, voice, photograph or likeness). Similarly, works such as databases may be protected under trade secret or contract law in the U.S. and abroad.  Further, new or later versions of a work, to the extent the underlying public domain has been embellished with new material, may also require permission. 
The following is, perhaps, the most insidious trap of all. Although a work may be in the public domain in the United States, it may still be protected in other countries. For example a work by a United States author that is in the public domain in the United States for failure to renew, may still be protected in countries such as Germany; where copyright formalities are abhorred, and duration is based on when the author died, not a specific term of years. If you plan to publish a public domain work abroad, you may be required to obtain permission if the author died within the last 70 years. If you fail to obtain permission, you will expose yourself to the risk of one or more lawsuits overseas. 

Uncopyrightable Material

There are certain types of works that are immune from copyright protection altogether.  Copyright does not protect unadorned or fundamental ideas, concepts, procedures, recipes, principles or discoveries. The same principle applies to  facts.  As a general rule, copyright does not protect short phrases, names or titles.  You can, however, trademark certain short phrases, names and series titles, provided, the mark is not already used for similar goods or services.  Copyright does protect the way ideas, concepts, procedures, principles and discoveries are described, explained or illustrated; it only protects the unique way in which they are expressed.  As is to be expected, the dividing line between an unadorned or unprotectable idea, concept, principle or theory, and one that is sufficiently developed to enjoy copyright protection, is often murky.      

Creative Commons
Some people and organizations use Creative Commons licenses to make their works available for free to the public. The license appears in close proximity to the work. With a Creative Commons license, the author or creator chooses a set of conditions they wish to apply to their work. If you violate the terms of the license, the potential consequences include compensatory or statutory damages, or an injunction.  So, read the Creative Commons license carefully!
Fair Use

Fair use allows scholars, researchers and others to borrow or use small (and sometimes large) portions of in-copyright works for socially productive purposes without seeking permission.   The doctrine -- which complements the First Amendment -- helps courts avoid rigid application of copyright law where rigid application would "stifle the very creativity which the law is designed to foster."  Against this backdrop, fair use can be looked at as a balancing act.  It is an imperfect attempt to reconcile the competing ideals of free speech with the property rights of individual creators.  

While invaluable to scholars, the media and business people, it should be noted that fair use is not a right but a defense to copyright infringement.   The central point is that fair use determinations involve risk.  So, if you can't make the decision yourself, and are risk adverse, seek permission.       

To determine whether the use made of a work in a particular instance is a fair use, courts consider the below four factors.  No one factor is determinative, although factor four, which relates to economic harm, weighs heavily in any fair use decision. 
  1. The purposes and character of the use, including whether the use is primarily commercial; 
  2. The nature of the work that's been copied;
  3. The amount and importance of what was taken in relation to the original work as a whole;
  4. The effect the copying has on the marketability of the original work and its derivatives
Top 10 Considerations When Evaluating Fair Use 

While there are no mechanical rules to define with precision what is a fair use, the following criterion, distilled from leading court decisions, will help you assess if a proposed use is likely to be deemed a fair use.       
  • Fair use favors transformative uses.   Use the work as a springboard for new insights.   Critique the original.  Make a connection between it and other works.  Use it to buttress your own arguments, or the arguments of others.  
  • Since ideas are common property, it's easier to justify use of a factual or informational work than a creative one.  That is because teaching, scholarship, research and news reporting are cumulative in ways not typically associated with art and music. 
  • Poetry, song lyrics, and visual works enjoy a high degree of protection under copyright law, so, fair use tilts against use of these works. 
  • Quoting from unpublished materials exposes you to greater risk than quoting from published materials. While not determinative in and of itself, if a work is unpublished, that fact weighs against fair use. 
  • Sometimes even a small (but important) portion borrowed from a larger work may constitute copyright infringement.  Make sure the amount you use is reasonable in light of the purpose of the copying.  
  • Synthesize facts in you own words, keeping in mind that close paraphrasing may constitute copyright infringement if done extensively.
  • Lack of credit, or improper credit, weighs against finding fair use. However, giving someone appropriate credit, will not, alone, transform an infringing use into a fair use.
  • Parody is a work that that ridicules or mocks another work.  Fair use favors parody.  It does not favor satire.  Make certain the parody is apparent.  A conservative approach is to conjure up just enough of the original to convey your parodic points. 
  • Being a non-profit educational institution won't insulate you against liability if you exceed the bounds of permissible fair use.  
  • The most important consideration concerns economic harm.  Don't compete with the work you are quoting or copying from. If the use displaces or diminishes the market for the original work, including revenue from licensing fees, it is probably not a fair use. However, the more transformative the work, the less likely the displacement of sales will be determinative.
To paraphrase the Chicago Manual of Style, fair use is a use that is fair, so be bold, but also heed the Copyright Office's warning: "[T]he endless variety of situations and combinations of circumstances that can rise in particular cases precludes the formulation of exact rules."
Fairness, like beauty, can be debated, but not easily defined.  If you are unsure, or, if permission is denied and you feel the material is important to your work, consult a copyright attorney.   

Additional Resources:

Copyright Office - Search Fair Use Opinions
Classroom Use Guidelines (not legal authority; but agreed-upon minimums)
Creative Commons

DISCLAIMER: This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances.   It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

LLOYD JASSIN is a New York-based copyright, publishing and entertainment attorney.  He is co-author of the Copyright Permission and Libel Handbook: A Step- by-Step Guide for Writers, Editors and Publishers (John Wiley & Sons, Inc.).   Lloyd has written extensively on negotiating contracts in the publishing and entertainment industries, and lectures frequently on contract and copyright issues affecting creators and their publisher partners.  A long-time supporter of independent presses, he is First Amendment counsel to the Independent Book Publishers Association  (IBPA) and sits on the advisory board of The Beacon Press, one of America's oldest independent presses. 

He may reached at or at (212) 354-4442.  His offices are located in the heart of Times Square, in The Paramount Bldg., at 1501 Broadway, FL 12, NYC, 10036.  Follow the Law Firm and Lloyd on Twitter at