Article by Nicola Solomon published in The Author of Spring 1992. Leading literary lawyer Nicola Solomon, a Deputy District Judge and Partner of Finers Stephens Innocent (179 Great Portland Street, London W1W 5LS, tel. 020-7344-7652) has kindly given AKME permission to reproduce this article. She can be e-mailed at nsolomon@fsilaw.co.uk.
The article is reproduced without any comment or editing by AKME.
Copyright law is surrounded by a kind of mystique. This may be because it is commonly called 'Intellectual property law', which suggests that you must be clever to understand it. This is not true, as I hope to show.
Because copyright is not concerned with reproduction of ideas but of the form in which those ideas are expressed, work must be recorded in some permanent form to attract copyright protection. The first owner of the copyright is the author (or, in the case of translations, the translator). However, the author must be a human person; the strange case of Cummins v Bond in 1927 established that if a ghost from the spirit world dictates a work to a medium then it is the medium who owns the copyright and not the ghost. The author is the person who chooses the form of words used, and not simply the ideas in the work; suggesting a plot does not make you an author and in the case of another kind of ghost, those who arrange and write down the reminiscences of famous people, it is the ghost writer who owns the copyright and not the personality.
Copyright is the right to prevent other people from using your work. It used to be the case that if an author wrote a book the main income would come from hardback publishing royalties, and if someone wanted to quote the work in an anthology that was an added bonus. These days other rights are big business, and income from them may well exceed the value of the royalties on the original work. The additional rights included in copyright cover paperback rights, translation rights, serial rights, rights of quotation, anthology, merchandising, bookclub rights, electronic publishing rights, film and TV adaptation rights and other dramatisation rights. Public lending right and moral rights however are separate rights which, although they belong to the author, are not contained under the general meaning of copyright. Copyright can be assigned in whole or in part, although to be legal an assignment must be in writing and signed by or on behalf of the author. The various separate rights can also be licensed.
Scope of rights to be granted
When confronted with any publishing agreement you should consider carefully which rights the publisher is in a position to exploit properly. If the publisher asks for an assignment of your entire copyright, it is obtaining the right to exploit the work in any medium. Although some large publishers now have international rights selling departments well able to exploit your work, others do not and you may feel that it is appropriate only to grant rights in certain territories (say UK) or to keep certain areas (such as dramatisation rights or merchandising rights) to negotiate yourself. If the publisher presses you to grant rights which you are uncertain it can exploit properly, then you should grant a licence of those rights on condition that they will revert to you automatically if they have not been exploited by the publisher within a certain time (say 12 months).
Payment
An assignment of copyright is binding and takes place when the document is signed. It is not contingent on the agreed fee or royalties being paid. If the publisher fails to pay the fee, your only remedy (unless you have agreed otherwise) will be to sue for the unpaid debt but you will not be able to regain your copyright. If you have granted a licence then failure to pay will normally be a breach for which you would be entitled to terminate the licence and have the rights revert to you.
Term of copyright
Even if you are prepared to grant the publisher the right to exploit your work in all media you should still consider retaining ownership of the copyright. The Publishers Association's Code of Practice (first issued in 1982) states 'the author should retain ownership of copyright unless there are good reasons otherwise - an exclusive licence should be sufficient to enable the publisher to exploit and protect most works effectively'. Charles Clark in his classic work Publishing Agreements notes that there are very few kinds of work for which a transfer of copyright is appropriate and comments that the Association's suggestion that it may be appropriate in particular fields of publishing such as academic and reference reflects the conservatism of educational and academic publishers. Even if,when you sell the work, you feel that you will never wish to use it again (a contribution to an encyclopaedia, perhaps) you may feel unhappy if it is never exploited at all. Or your heirs may wish to use it. So you might suggest granting a limited licence or partial assignment of copyright for a specified term such as 10 or 20 years. Traditionally, publishing licences were granted for the full term of copyright (usually the author's life plus 50 years) but this is changing and some of the more enlightened publishers (e.g. Faber and Hodder) who have signed Minimum Terms Agreements only seek 20 year licences. This should be perfectly satisfactory for publishers, since the life of most hardbacks is currently considered to be 2-3 years and a paperback sub-licence is usually for 7-8 years.
The right to sue for infringement of copyright
If you do assign the copyright your publisher will have full legal rights to sue for infringement without asking your permission. Publishers sometimes use this as the reason why they want a partial assignment - they must have the ability to protect the copyright without consulting the author so that they can sue in other jurisdictions or when the author is unable or unwilling to act. However this is a weak argument because, although an exclusive licensee must join the licensor in any court action (except on an interlocutory injunction), the publisher can apply to the court for leave not to join the author, and such leave would readily be granted in appropriate cases. From the author's viewpoint, if you have assigned the copyright, you have no right to sue for any infringement nor to force the publisher to sue. Therefore if the publisher feels unthreatened by an infringement, or that it would be too expensive to sue, you may have to stand by and watch your work being freely copied with no remedy and no claim for royalties.
The right to alter the work
If you assign the copyright the publisher can publish successive editions and make additions, corrections or changes without infringing copyright. If you only give a licence to publish, then it is probably implied that publication must be in the original form and alterations would be an infringement of copyright. There are, however, other limitations on a publisher's right to amend your work even if it has the copyright. In particular, the Copyright Designs and Patents Act 1988 brought so-called 'moral rights' into English law for the first time. These allow an author to object to any change to the work which amounts to derogatory treatment - treatment that amounts to a distortion or mutilation, or is otherwise prejudicial to your honour or reputation. If the alteration was done by someone else, the publisher cannot claim it was by you if that would induce the public to buy the book or your reputation would be damaged or you deprived of sales. This would also amount to a breach of your moral right of false attribution. Finally, you could also complain if the alteration was so bad that it amounted to defamation, that is it would lower your reputation 'in the minds of right thinking people'. Despite these limitations, there are plenty of changes that a copyright owner is entitled to make without reference to you; for example, changes of the names of all the characters. In law, you would only have redress if the changes were prejudicial to your honour or reputation - the fact that they offended your aesthetic sensibility would not be strong enough grounds on which to complain.
The right to assign
If you assign the copyright the publisher can make a further assignment to anyone else even if by doing so it is breaking a term in the original copyright assignment. Although you will be entitled to sue the publisher for damages for breach of contract, the sub-assignment will still be valid unless the purchaser had actual notice of the prohibition on assignment. An assignment therefore puts at risk your control over the ownership of your work, which could be sold to a publisher of whom you strongly disapproved or who you felt would not exploit the work fully. Publishing licences on the contrary are generally considered personal and non-assignable (because you enter into them on the strength of your view of the publisher's reputation).
Insolvency of publisher
In general, if you have assigned your copyright and the publisher becomes insolvent your only remedy is as a debtor for the unpaid royalties. The liquidator would be entitled to sell your copyright without any obligation on the purchaser to pay royalties to you. If you only granted a licence, it will automatically terminate on the liquidation of the publisher, and the liquidator would not be entitled to reprint or sub-license the work (even on paying your share of the royalties) unless you consent. Liquidators can, though, dispose of stock, since to do so is not an infringement of copyright if the books were printed under the terms of the licence.
Failure to exploit
If you sell your copyright to a publisher for a lump sum, the publisher has no obligation to publish the work (unless expressly agreed) even if the failure to do so leads to a failure of the opportunity to enhance your reputation. If you grant an exclusive licence to publish you should include specific terms about the time within which the publisher should exploit the work - though even if you do not, there will probably be an implied term that the publisher must publish within a reasonable time, and if it does not you can terminate the licence and all rights will revert to you.
Your own later work
Once you have assigned copyright you cannot reproduce your own work, and there might be problems if you then write something similar. However this is unlikely to be a serious difficulty since if you produce something in a similar style a court will realise that a similarity to your own work is natural and does not raise an inference of improper use of what has become the publisher's copyright. If you grant an exclusive licence you will in any case almost always have to covenant not to produce competing works.
You will see that it usually makes sense to hold onto your is copyright and to grant a licence only. It should not prevent the publisher from properly exploiting your work, but means that if things do go wrong (however unlikely that seems when you sign the contract) you can ensure that the rights in your work revert to you and that you have some protection. Copyright, it seems, is rather like your soul. It may be tempting, like Faust, to sell it in return for some illusory short-term gain - but when the going gets tough you may realise its true value.
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