Joe Donnini, a California attorney, specializes in business, real estate, and intellectual property/entertainment law and teaches several law-school courses, including copyright law. He is also a self-publisher. For more information, visit joedonnini.com or call 310-321-7643.
Imagine this: The author of one of your spring 2010 books calls to say that she was searching for her name on the Web, and she found the cover of her forthcoming novel on another publisher’s site. She’d like an explanation, but you are as puzzled as she is, because you obtained the exclusive rights to her book and did not grant anybody else any rights to it.
When you go to the site, you notice several things. Visitors can download a copy of your book instantly—not to mention before your pub date. Furthermore, visitors can click to listen to streaming video and audio of key parts of the book being acted out and read. And finally, right next to the image of your book and the accompanying description of it, there is an image of another book, this one from the other publisher—let’s call it RightsGrab House—that uses the same characters your author created and evolves her plot, creating a sequel of sorts.
Of course, you get hold of your lawyer, and then you notify RightsGrab that it has infringed on several of your rights under copyright law. Unfortunately, RightsGrab’s response claims the right to use everything being used and asserts that these uses do not infringe on any copyright.
More to Watch Out For
With today’s increasing use of the Internet, situations like this are becoming more commonplace. In the age of digital technologies, pure “copying” is no longer the most prevalent mechanism for infringing on a copyright holder’s rights, and publishers and authors must be alert to various new ways in which a literary work can be utilized and infringement can occur. Of course, each situation is unique, and you should rely on any information only after obtaining specific legal advice given by a licensed attorney. (For more on dealing with infringement on the Internet, see “Do You Know Who’s Using Your Content? Tactics for Finding Out” in this issue.)
What are a copyright holder’s rights? The Copyright Act of 1976, which entailed a major overhaul of United States copyright law, defined six types of exclusive rights that are afforded to the owner of the copyright. In accordance with the act, they include the rights to reproduce, prepare derivative works, publicly distribute, publicly perform, publicly display, and publicly perform via digital audio transmission (for sound recordings only).
The scenario above makes it easy to argue that RightsGrab infringed on several of your rights.
By placing an image of your novel on its Web site, by allowing visitors to download the novel, and by using parts of it for streaming audio and video, it appears to have infringed on your reproduction right. This basically equates to copying.
Next, since RightsGrab has published a novel that seems to utilize the characters and plot in the novel you bought, equating to a sequel, it and/or the author of the “sequel” may have violated your right to prepare derivative works. If a work is “recast, transformed, or adapted,” it stands a good chance of being characterized as a derivative work based on the original work. Derivatives of the original work are solely for the copyright owner to make, unless the copyright owner chooses to license this right to another party, according to the Copyright Act.
As if this weren’t enough, RightsGrab seems to have infringed upon your public distribution right by offering your book for sale on its Web site. Copyright owners have the right to publicly distribute their work. It is true that a limitation on the copyright owner was brought about under what is known as the First Sale Doctrine, which provides that copyright owners cannot control the transfer of ownership after the first sale of a copy so long as the copy being transferred was lawfully obtained. But a purchaser will not obtain any interest in the copyright by purchasing a book.
The infringement allegations don’t stop here. RightsGrab may also have violated your public display and public performance rights by posting images of the book statically on its site and by allowing visitors to click and watch and listen to parts of the book.
Ways to Protect What’s Yours
So what could you do? Working with your lawyer, you might consider several options, including:
- Contacting RightsGrab’s Internet service provider (ISP) and following what is called the “Notice and Take Down” provisions of Section 512 of the Digital Millennium Copyright Act (upcoming articles will explore the application of this).
- Giving limited permissions to RightsGrab—in a well-written contract—if you believe that value exists in the exposure your book might receive from its site. This would require a business analysis of whether the exposure furthers your marketing objectives or serves as a competitive disadvantage, particularly if no monies were to be exchanged.
- Giving limited or full permissions to RightsGrab—again, in a well-written contract—in exchange for a reasonable exclusive or nonexclusive license fee.
- Filing a lawsuit for infringement and seeking monetary damages and/or injunctive relief to get RightsGrab to temporarily and/or possibly permanently stop Web site activities associated with your book.
These are some generalizations based on our hypothetical, which also includes the possibility that RightsGrab has some defenses, such as a claim under the Fair Use Doctrine. Fair Use application requires a look at several factors that can determine whether a particular infringement is permissible under this defense. Whether RightsGrab would succeed would require a separate analysis of such factors applied to each infringement separately.
In the Real World
With more and more emerging technologies, the law will undoubtedly continue to evolve, and publishers and authors will need to keep learning about new uses of copyrighted material. The good news is that knowing more won’t just help prevent infringement; it may also open additional revenue opportunities in terms of licensing. Instead of filing a lawsuit immediately, a copyright owner might find success by trying to legitimize an infringement and getting the infringer to pay a fee for the use.