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BY BILL POWELL
These days it is rapidly becoming more common for authors, photographers and other media types to find their work published electronically without their permission.
I have fielded several questions and given advice to a number of OWAA members about how to handle this. Here’s a summary.
First, determine if the published work is truly yours in a legal sense.
Although the default rule under the Copyright Act is that the creator of an original work owns the copyright (the right to copy it and profit from it) from the moment of creation, several exceptions to this exist.
One exception is that if you created the work as part of your employment, the work is probably a “work made for hire” and under the Act, the copyright belongs to your employer, not you, unless you and your employer agreed otherwise in writing.
Another exception is if you created the work as a freelancer but signed an “all rights” or “work for hire” contract. The same legal conclusion applies: copyright belongs to the publisher, not you.
Also, certain creative works are beyond the scope of copyright law protection, such as titles to works and government documents. No one may claim copyright protection for them.
With books in particular, limited revisions generally are permitted without being infringement.
Second, register your copyright for the work if you have not already done so.
Do this only if you are certain that you own the copyright.
Claiming something you don’t own is infringement and there may be worse consequences.
Registering your copyright is simple and relatively inexpensive, especially if you do it electronically.
A suit against someone for infringing your copyright is not possible unless you registered your copyright first. The damages you are entitled to recover for infringement are greater the earlier you register, especially if registration is accomplished before the infringement occurs. Also, the fact of having obtained registration is useful as leverage when approaching an infringer.
Third, determine if the work you created and own the right to copy is really reproduced without legal authority.
These days, this can be a tricky and difficult step.
Most authors know of the “fair use” doctrine, under which limited use of others’ works is permitted without constituting infringement.
Similar non-infringing use is permitted for parodies of an original work.
Contracts signed by authors/creators under which they retain the copyright often contain terms permitting more uses than the creators realize, even if they are not “all rights” or “work for hire” contracts. If you find a piece you created and had sold rights to, you should find the agreement under which rights were sold and review it carefully to see if the current use might have been encompassed by the licensing or other rights you granted originally.
Some case law over the last few years has created serious problems for copyright owners because, by court rulings, uses beyond what the creators intended or contemplated have been approved as non-infringing. Two cases involving National Geographic magazine’s DVD collection both ultimately reached the nonsensical conclusion that digital reproduction of exact images of articles and photographs from the original periodical for which one-time rights were acquired from freelancers was not an infringing use, but in fact was a “revision” permitted by the Copyright Act. These cases, Greenberg v. National Geographic and Faulkner v. National Geographic, both of which the Supreme Court declined to review, are the authority being relied upon when publishers make their periodical archives available online and profit from them in various ways without passing along any more money to the authors. I have some reports suggesting that this same reasoning may be being used by book publishers in making older books available electronically.
In addition, class action suits, and specifically court-approved settlement of those suits, may create different ways under which publishers obtain rights to profit from works without explicit consent from the copyright owners. The major cases of this type are the Authors Guild v. Google Books litigation involving some 12 million books that already have been digitized by Google without even attempting to obtain permission from copyright owners; and the case called “In re: Literary Works in Electronic Databases Copyright Litigation,” which involves a large class of freelancers suing a large number of publishers, seeking compensation for the behavior of publishers found to be infringing of authors’ copyrights in the U.S. Supreme Court’s 2001 Tasini v. New York Times case. The Tasini case involved profiteering via databases from freelancer works included in periodicals under one-time rights.
However, despite years of litigation and multiple settlement agreements initially approved by the courts and then ultimately rejected, with some appeals along the way, including one appeal to the Supreme Court in the latter case, as of this writing no approved settlement in either case stands. It is reasonable to expect that if any settlement in either case wins final court approval, it likely will involve payment by the publishers into a pool to be divided among authors, and grant of some rights to the publishers, with exculpation for past acts, as well as an option for authors to opt out of the settlement terms and go on their own with regard to their individual works being infringed. If an author or photographer receives a notice about any class action suit or proposed settlement, choosing among the options offered can make an enormous difference and even doing nothing in such circumstances always amounts to a choice having legal and financial consequences.
A 1996 federal law insulates certain electronic postings from creating copyright infringement liability. The Digital Millennium Copyright Act, and in particular the portion of it called the Online Copyright Infringement Liability Limitation Act, protects online service providers, including social media and similar providers as well as Internet service providers, from incurring liability if the infringing material is posted by a user rather than the service provider, but the service provider must promptly take down the infringing material when the copyright holder informs the provider of the infringement. Failure to comply with the Act renders the provider liable for the infringement. The user who posts infringing material has no protection from such liability.
OWAA members have told me of multiple instances in which they have discovered their works being used for profit: as sign advertising, on T-shirts, posted for downloading from a variety of websites, and in electronic archives of various types from which copies may be purchased or to which access may be gained upon payment. All such uses, unless they fit within those uses described in this section that have been ruled non-infringing, probably constitute infringement of your copyright.
Fourth, demand a takedown and, where appropriate, compensation for the infringement of your copyright.
Some OWAA members have had success with this. The chance of success is probably enhanced if your copyright is registered with the Copyright Office. A matter-of-fact letter with return receipt, informing the infringer of the facts, including your registration, and stating a realistic demand supported by the Copyright Act’s principles, may both educate and produce compliance. Copyright infringement renders the infringer liable to the copyright owner for all of the infringer’s earnings from the work, and in some circumstances, more may be recovered.
Some members have had demands for cessation and compensation met with refusal and entrenchment. One even received a counter threat from the infringer’s attorney that the
author would be sued if he didn’t stop harassing the infringer.
On the other hand, some such demands have produced cessation of the infringement or compensation or both. Some have resulted in an agreement under which the continued use is licensed for compensation.
Be aware that if you are addressing a service provider protected by the Online Copyright Infringement Liability Limitation Act, all you’re really entitled to from that provider is a prompt takedown. Reiterating, be sure it’s yours if you are demanding a takedown. There is recent litigation over misuse of takedown requests by those incorrectly alleging ownership of posted material. Don’t do something that turns you into a defendant in a lawsuit.
Fifth, in some circumstances, sue.
Only this fifth step actually requires the services of an attorney. You should carefully consider the costs of this step, in terms of time, psychological trauma and money.
The attorney selected for this step must be a specialist in copyright law. It’s exclusively federal law. The requirement of prior registration of the copyright serves as a toll booth for pursuing this option, but that will be an insignificant part of the costs for going down this road. If your damages are high, or if you can align with others and produce a number of similarly situated people who have been damaged by the same infringer in the same way, your case might be more worthwhile and more attractive to a copyright attorney, and you and your attorney might even have your own class action to pursue.
More detail on most of these topics appears in articles I’ve written for Outdoors Unlimited, and may be found in the archives. These topics also are addressed at somewhat greater
length in the “Legal Handbook for Freelancers,” which I authored in 2009, the copyright of which is co-owned by OWAA and me. It’s available from OWAA headquarters. I’m also available via email and telephone to address particular situations members encounter.
EDITOR’S NOTE: The “Legal Handbook for Freelancers” is available for purchase at www.owaa.org/store/product/legal-handbook.♦
—A member since 1994, Bill Powell is from Columbia, Mo. He is also OWAA’s legal counsel. Contact him at powell@smithlewis.com.
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