Transfers From an Author’s Point of View ..........................................................................218
Transfers From a Book Publisher’s Point of View ............................................................218
Electronic Publishing and Ownership of Electronic Rights ............................................218
Initial Ownership of Electronic Rights ..................................................................................218
Transfer of Electronic Rights by Individual Authors .....................................................219
Transfers of Electronic Rights in Freelance Articles .......................................................219
Ownership of Electronic Rights in Older Works ............................................................ 220
Transfer Documents ...............................................................................................................................221
Transfer Agreement Must Contain Certain Minimum Provisions ....................... 222
Marriage, Divorce, and Copyright Ownership .......................................................................224
Copyrights as Community Property ....................................................................................224
Equitable Distribution States .................................................................................................... 226
202 | THE COPYRIGHT HANDBOOK
Recording Copyright Transfers With the Copyright Office........................................... 226
Why Record a Copyright Transfer? ........................................................................................ 226
What Can Be Recorded? .............................................................................................................. 228
How to Record Transfer Documents (or Other Documents Pertaining
to Copyright) ................................................................................................................................. 228
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 203
In Chapter 7, “Initial Copyright
The Terminology of Transfers
Ownership,” we discuss the rights that
accompany copyright ownership. Here
Several different terms can be used to
is a brief recap. An author automatically
describe a transfer of copyright ownership
becomes the owner of a complete set of
rights. Many of these terms are used
exclusive rights in any protected expression
interchangeably and have no settled legal
he or she creates. These include the right to:
meaning, but here is how we’ll use them in
• reproduce the protected expression
this book:
• distribute copies of the work to
• Assignment means a transfer of all
the public by sale, rental, lease, or
the exclusive rights that make up a
otherwise
copyright.
• prepare derivative works using the
• Exclusive license means a transfer on
protected expression (that is, adapt new
an exclusive basis, of one or more,
works from the expression), and
but less than al , of a copyright
• perform and display the work publicly.
owner’s exclusive rights.
These rights are exclusive because only
• Nonexclusive license means giving
the owner of one or more particular rights
someone the right to exercise one or
that together make up copyright ownership
more of a copyright owner’s rights on
may exercise it or permit others to do so.
a nonexclusive basis. Since this does
For example, only the owner of the right to
not prevent the copyright owner
distribute a book may sell it to the public or
from giving others permission to
permit others—a publisher, for instance—
exercise the same right or rights at
the same time, it is not a transfer of
to do so.
copyright ownership.
With the important exception of self-
Again, please remember that these
publishers who reproduce and distribute
definitions are only for the purposes of
their work themselves, authors normal y
this discussion. In the real world, it makes
profit from their copyrights by sel ing their
no difference if a transfer is called an
rights to publishers or others to exploit. And,
assignment, a license, a contract, or a grant
except where they publish works that are in
of rights or is given no label. The effect
the public domain (such as works original y
of an agreement to transfer copyright
published before 1923), publishers must
ownership rights is determined according
acquire the right to reproduce and sell a work
to the language it contains, not its label.
from its author or other copyright owner.
204 | THE COPYRIGHT HANDBOOK
How Copyright Ownership Rights the publishing business, the most common
Are Transferred to Others
divisions are by language, type of media
(hardcover and softcover books, ebooks,
A transfer of copyright ownership rights
magazines, film, video, audiotapes, and so
must be in writing and signed by the person on), time, or geography.
who owns the rights being transferred. There
are two basic types of copyright transfers:
EXAMPLE 1: Jennifer writes a high school
exclusive licenses and assignments. Although
math textbook and sel s Scrivener & Sons
these terms are often used interchangeably,
an exclusive license to distribute ebook and
there are some differences.
print editions in the United States only. She
then grants MacKenzie Press an exclusive
license to sell the book in Canada, and
Exclusive Licenses
Trans-European Publishing Co. the right to
The term exclusive license is usually used
sell it in all European Community (Common
when a copyright owner transfers one or more
Market) countries.
of his or her rights but retains at least some
EXAMPLE 2: Leo writes a biography and
of them.
grants Scrivener & Sons the exclusive right
to sell it in the United States in hardcover,
EXAMPLE: Jane writes an article on econom-
paperback, and as an ebook edition for the
ics and grants The Economist’s Journal the
Amazon Kindle. He licenses the right to sell
exclusive right to publish it for the first time
an ebook edition for the Apple iBook store to
online and in its North American print
AcmeSoft, Inc. He grants all English language
editions. Jane has granted the Journal an
rights outside the United States to the British
exclusive license. Only the Journal may
publisher MacCauley & Unwin.
publish the article for the first time online
and in its North American print editions.
But Jane retains the right to republish her
Exclusive Licensee’s Rights
article after it appears in the Journal and
to include it in a bo
ok. She also retains the
The holder of an exclusive license becomes
right to create derivative works from it (for
the owner of the transferred right(s). As
example, to expand it into a book-length
such, unless the exclusive license provides
work), as well as other rights that weren’t
otherwise, the owner is entitled to sue
specifical y transferred in the license.
anyone who infringes on that right during
the period of ownership and is entitled to
A copyright owner’s exclusive rights are
transfer the license to others. The license
almost infinitely divisible. That is, they can
holder may also record the exclusive license
be divided and subdivided and licensed to
with the Copyright Office; this provides
others in just about any way imaginable. In
many valuable benefits.
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 205
EXAMPLE 3: Martha writes a detective
Assignments
novel. She grants Hardboiled Publications,
Inc., the exclusive right to sell the book in all If an owner of all the exclusive rights in hardcopy and ebook editions in the United
a copyright simultaneously transfers the
States and Canada. She then gives Repulsive
entire bundle of rights that make up the
Pictures the exclusive right to create and
copyright to a single person or entity, the
distribute a film based on her work, ABC
transaction is usually called an assignment
the right to use it for a television series, and
or, sometimes, an all rights transfer. An
Zounds Unlimited, Inc., the right to adapt it
assignment must be in writing to be valid.
into an audiobook.
EXAMPLE: Otto assigns Acme Romances
the entire copyright in his romance novel
Can Copyrights Be
Love’s Lost Languor. This means that Acme,
Transferred by Email?
and only Acme, may publish the work or
permit others to do so, or exercise any
Can you transfer all or part of a copyright
other part of the bundle of rights that
through email? That answer is unclear.
make up the copyright in the work (such as
Remember, the copyright law says a transfer
authorizing someone to adapt the book into
must be in writing signed by the copyright
a screenplay). Otto has relinquished these
owner to be valid. An email would not effect
rights. For all practical purposes, Acme now
a valid transfer unless the electronic signature
owns the copyright instead of Otto.
it contained was deemed to satisfy the signing
requirement. The only court that has ever
considered this question held that emails were
Nonexclusive Licenses Do Not
not sufficient to transfer ownership. ( Ballas v.
Transfer Copyright Ownership
Tedesco, 41 F.Supp.2d 531 (D. N.J. 1999).) Since
As mentioned earlier, a nonexclusive
that time, however, Congress enacted a law
license gives someone the right to exercise
called the Electronic Signatures in Global and
one or more of a copyright owner’s rights,
National Commerce Act (ESIGN for short)
but does not prevent the copyright owner
providing that electronic signatures are legal y
from giving others permission to exercise
valid. (15 USC § 7001(a).) It remains unclear,
the same right or rights at the same time.
though, how this new law applies to copyright
A nonexclusive license is not a transfer
transfers. For this reason, you should always
of ownership; it’s a form of sharing. The
obtain the actual signature of the owner of
most common type of nonexclusive license
the copyrights you wish to obtain.
is one granting an author permission to
206 | THE COPYRIGHT HANDBOOK
quote from, photocopy, or otherwise use
Nonexclusive License May Be
a protected work; such licenses are often
Implied From Circumstances
called permissions. See Chapter 10, “Using
Other Authors’ Words ,” for a detailed
An express written or oral agreement is not
discussion and sample permission form.
always required to create a nonexclusive
license. A nonexclusive license can be implied
EXAMPLE: Tony, an avid parachutist, has
from the circumstances—that is, where
written and self-published an ebook on
the circumstances are such that a copyright
advanced parachuting techniques. He gives
owner must have intended to grant a
the Fresno Parachuting Club permission
nonexclusive license, it can be considered to
to publish a copy of the ebook on its
exist without an actual agreement.
blog. Tony retains the right to let others
copy and distribute his ebook or may
EXAMPLE: When a person sends a
do so himself. Tony has given the club a
letter to the editor of a newspaper or
nonexclusive license to exercise some of his
magazine, a nonexclusive license giving
copyright rights in his ebook. The license
the publication the right to publish the
is nonexclusive because the club cannot
letter in its letters to the editor section
prevent Tony from letting others exercise
is implied; the newspaper or magazine
the same rights he has granted to it.
need not seek the letter writer’s formal
permission to publish the letter.
As with exclusive licenses, nonexclusive
licenses may be limited as to time, geo-
graphy, or media or in any other way.
They can be granted orally or in writing.
Sales of Copies Do Not Transfer
The much better practice, however, is to
Copyright Ownership
use some sort of writing; this can avoid
possible misunderstandings and gives the
Ownership of a copyright and ownership of
nonexclusive licensee certain priority rights. a material object in which the copyrighted It is not necessary to have a formal contract work is embodied—such as a book or an
filled with legalese to grant a nonexclusive
article—are entirely separate things. This
license. A simple letter or memo is sufficient. means the sale or gift of a copy or copies Just make sure that you make clear the
of a book, an article, or another protected
license is nonexclusive (use the term non-
work does not transfer the copyright owner’s
exclusive license) and spell out the terms
exclusive rights in the work. A copyright
and conditions of the license—that is, what owner’s exclusive rights can be transferred
rights are being licensed, to whom, and for
only by a written agreement. For example,
how long.
a person who buys a copy of a book or
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 207
First Sale Doctrine
Under what is known as the first sale
The United States Supreme Cour
t has held
doctrine, once a copyright owner sel s or
there are no geographic limitations on the first
gives away a copy or copies of a book or
sale doctrine. The case involved a Thai student
another physical manifestation of the copyright, who came to the United States to study and he or she relinquishes all control over that
engaged in a business arrangement with his
physical copy itself. The purchaser can resell
family in Thailand. They would send him books
the copy without the copyright owner’s
purchased in Thailand and he would resell
permission or, if the purchaser is a library,
them in the United States market. The student
lend it to the public.
expanded the business and eventual y earned
$100,000 profit. United States publishers sued
EXAMPLE: Morris has self-published
the student arguing that the first sale doctrine
500 copies of a book on do-it-yourself
did not apply to “gray market goods”—lawful y
plumbing. He sel s all 500 copies of the
made goods that were imported into (but not
book to Joe’s Hardware Store but does
made in) the United States. The Supreme Court
not transfer any copyright rights to Joe’s.
disagreed and ruled for the student, stating
Joe’s is entitled to sell all 500 copies, rent
that as long as the copies were lawful y made—
them, give them away, destroy them, or do
under the direction of the copyright holder—
anything else it wants with them. But, of
there was no requirement that the books be
course, Joe’s cannot reproduce the book
manufactured in the United States ( Kirtsaeng v.
or exercise any of Morris’s other exclusive
John Wiley & Sons, Inc. , 568 U.S. ___ (2013).)
rights without his permission.
manuscript owns that book or manuscript
Copyright Transfers Do Not
but acquires no copyright rights in the work. Affect Copyright Duration
EXAMPLE: Luther, an extremely wealthy and
Copyright transfers do not affect the
avid book collector, purchases the original
duration of the copyright, even if the entire
manuscript of James Joyce’s Finnegan’s Wake
bundle of copyright ownership rights is
from Joyce’s estate. However, Luther does
transferred. See Chapter 9, “Copyright
not obtain any copyright rights in the work.
Duration.” However, a transfer itself may be
Although Luther owns the manuscript, he
The Copyright Handbook Page 36