The Problems with “Old” Publishing Contracts

August 1997
by Ivan Hoffman, B.A., J.D.
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Ivan HoffmanIvan Hoffman (photo right) is a publishing, copyright, Internet law, recording, and music attorney as well as a published writer and author. He practices in the Los Angeles area. You may reach him at ivan@ivanhoffman.com or 818/342-1762.


If you are a publisher with contracts that are more than 15-20 years old, you may have some ticking and potentially problematical issues of which you may be quite unaware. These issues often arise at unexpected and inconvenient times (although when a convenient time for a problem to arise is not clear). Two potential problems deal with the renewal rights to your “older” copyrights and the use of books and other writings in the areas of newer, electronic technologies.

If you are one of these publishers, it may be time to take a look at your agreements with authors. What you believe you have by way of rights may simply not be so.

Who Can Renew an “Old” Copyright?

If your publishing catalog contains older “works,” you may be well advised to take some heed. You may not own what you believe you own in these works—which are long-term rights to renew the original copyright. No matter what your underlying agreement with the author may state, even if it grants to you the right to the renewal of the copyright in the work, the right to renew these “old” copyrights is strictly regulated. And if some of these older copyrights have already been “renewed” by you, you may not actually have been entitled to do so and may perhaps not be entitled to continue to print the books so copyrighted.

Initially, there is the issue of what steps had to be taken to renew copyrights. Until 1992, in order to secure the second or renewal term of 47 years (up from the previous 28 years of the renewal term under the 1909 Copyright law), the person entitled to renew had to file a certificate to renew that copyright during the 28th year of the original term. If no such renewal was made, the copyright went into the public domain at the end of that 28th year. In 1992, the second or renewal term was automatically extended for 47 years without the need to file that renewal certificate. Thus, after 1992, no action was required in order to obtain the extended period of protection.

In either case, whether a renewal application is required to be filed or not, only a certain category of person is entitled to the renewal rights in the most frequent of situations, as follows (there are other, more unusual situations that have different rules but for the sake of simplicity, I will leave those out of this article):

  1. The author, if the author is still living.
  2. The widow, widower, or children of the author, if the author is not living.
  3. The author’s executors, if the author, his widow, widower, or children are not living.
  4. The author’s next of kin, in the absence of a will of the author.

No matter who is entitled to the renewal rights under the above categories, the publisher, by its original contract, is most often not entitled to those rights and must obtain a separate agreement from the owner of these renewal rights in order to vest those rights in the publisher. In other words, the publisher cannot rely upon the granting language of the original contract to convey renewal rights. There must be a separate negotiation and agreement entered into with the appropriate party.

But this is not always as easy as it seems and who obtains the renewal rights may depend upon whether or not an application to renew the copyright was made during the 28th year of the original term and whether or not the author lives throughout that 28th year. The rules are quite complex and you should consult with an attorney familiar with these issues if you are facing such a problem.

Of course, under the current copyright law, as to works created after January 1, 1978, there is only one term and those works have a copyright duration equal to the life of the author plus 50 years in instances similar to the ones described in this article. (There may be other duration periods depending upon various factors.)

Having only one term for copyright makes things a great deal simpler and so makes for less work for attorneys . . . wait, wait . . . that’s not a good thing!

The “Future Technologies” Clause

You may also have a clause in your older agreements that grants to the publisher the right to use the material in “all media, whether now known or hereafter developed” or words to that effect. It may even specifically mention rights to “electronic media.” Unfortunately, like many things in the law, words do not always mean what they appear to mean. And if you don’t have such a clause, then as a publisher, it appears your rights may be even more limited.

If your agreement does not go into some specifics of exactly what kind of “future technologies” are intended to be covered, you may have some open questions as to whether or not a given usage is permissible under the agreement. For example, may you convert the book into a CD-ROM format or post it on the Internet? What about granting motion picture or television rights? Broad general language about these future uses may be subject to a different interpretation by the different parties to the agreement. Courts have gone in a couple of directions when it comes to later exploitation of older material in media that was not in existence at the time the contract was executed.

Essentially the court decisions turn on the response to the questions: “What was the parties’ intention at the time the contract was entered into?””What did they intend and what could they have reasonably foreseen?” And the language of the agreement is among the key issues used to answer these questions.

Some courts have decided that the original material, in this instance a book, can be exploited in all ways that are reasonably related to the original medium. So for example, if you as the publisher wanted to put out a CD-ROM version of the book or license it to an online data base, you might be able to do so since you might be able to argue that such use, although not in existence at the time the original agreement was signed, is reasonably related to the original use and by the broad language of the “future technologies” clause, it was contemplated by the parties. This, of course, depends upon the breadth of the language of the clause. These courts have said that if the granting language is broad enough to cover a new use, then the burden of proving that the use is not covered falls on the shoulders of the party making the claim that it should not be part of the original contract.

Other courts have viewed the future technology clause much more narrowly, restricting the future media to only those that fall within the “unambiguous core” of the specifically referred to technology. Any uses that fall outside this core are deemed not covered by a general grant. Under these court decisions, if neither party knew or should have known about a particular technology at the time of execution of the agreement, then such future use might not be allowed and the rights thereto might not pass to the publisher under this general clause. In examining this question, one of the issues is the scope of the experience of the parties in the industry.

Thus the rule is that the more specific the language of the grant is, the more likely it is to be upheld. The more vague and less specific it is, the less likely it is to be upheld.

Additionally, the courts look not only to the “granting” language but to any language in which the author reserves any rights. There may be conflicts between what appears to have been granted to the publisher and what may have been reserved by the author. So, for example, even if the granting language is broad, there may be another clause reserving to the author certain specific rights. These specific reserved rights may serve to aid in the interpretation of what broader rights were intended to be granted.

These points are not merely academic theorizing. They translate into hard dollars since whoever has the “new media” rights is in a position to make money on them. If the publisher has acquired such rights, then there may be a wide avenue of future income possibly to be derived in the coming years. If the author ends up retaining such rights, the publisher may likely not share in any income from those rights at all.

But there is a second aspect to this issue: the person making the broad grant, in this example the author, must also have negotiated to be paid on all such uses as are broadly granted. This is often overlooked in the royalty clause of the agreement. There are specific references to payments for one or another use—normal trade channels, book clubs, etc.—but there also must be a “catch-all” clause that provides for payment for all uses not otherwise expressly set forth. Without such a clause, it may amount to a “double whammy” for the author; he or she may have given away the rights but not provided to be paid on them.

In other words, if you are a publisher and even if you have these “new media” rights, is there a clause in your agreement with the author requiring payment to the author for such exploitation? Does the underlying agreement have a payment clause providing that the author receive some percentage of any such uses? Merely because the agreement grants the publisher these rights does not automatically mean that the author shares in that exploitation. There may be a gap in royalty coverage in that same underlying agreement.

Conclusion

In sum, if you have an older contract and you are seeking new ways to exploit the book, you had better take a look at the clause carefully. When combined with the potential problem regarding renewal rights, you may be left out in the proverbial cold.

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