Chapter 7, “Initial Copyright Ownership.”)
typically include the transfer of the author’s
The electronic copyright in works made
electronic rights.
for hire will be initially owned by the
When an author sel s a book to a
employer or hiring party the moment the
publisher, the publishing contract defines
work is created. The employer or hiring
which rights the publisher gets and which
party is the author for copyright purposes,
the author keeps, if any. The right to license a
not the person who actually created the
work for use in electronic form is specifically
work. This includes:
dealt with in a modern publishing
• works created by employees within the agreement.
scope of their employment, and
Most publishers insist on acquiring al
• specially commissioned works created by electronic rights along with the right to
independent contractors under written print the work in book form. This ensures
work-for-hire agreements. (See Chapter 7, them access to an important and rapidly
“Initial Copyright Ownership.”)
growing market. However, this is a matter
Since the employer or hiring party using for negotiation, as is how much an author
a work-for-hire agreement automatically
will be paid for such rights. Experienced
owns all electronic and other copyright
authors who have agents may be able to
rights the moment a work is created, there
retain some or even all electronic rights to a
is no need for them to obtain any additional work. Inexperienced authors will likely have transfer of rights from the actual creators
difficulty retaining any such rights.
after the work is completed.
An increasing number of magazines,
Transfers of Electronic Rights
newspapers, and journals are now using
in Freelance Articles
work-for-hire agreements with freelance
writers in order to obtain all the rights in
The U.S. Supreme Court held in 2001 that,
the work, including electronic rights.
if a publisher has not acquired electronic
rights in writing, permission must be
obtained from the author to reproduce a
Transfer of Electronic Rights
by Individual Authors
freelance article in an electronic database.
( Tasini v. The New York Times Company,
With the important exception of self-
533 U.S. 483 (2001).) The court held that
publishers who reproduce and distribute
when a freelancer—that is, a nonemployee—
220 | THE COPYRIGHT HANDBOOK
contributes an article or other material to a
event, the publication, not the free-
collective work (for example, a newspaper,
lancer, is considered to be the author
magazine, periodical, journal, or an
of the work for copyright purposes.
anthology or encyclopedia) but does not
(See Chapter 7, “Initial Copyright
specifically transfer all or part of his or her
Ownership.”)
copyright rights, the collective work may
• If less than all rights are being
only use the article or other material in:
transferred, the freelancer can be
• the original version of the collective
asked to specifically transfer electronic
work—for example, a specific issue or
rights—a clause transferring such
edition of a periodical
rights needn’t be long or complex. A
• a revision of that specific collective
clause like the following will suffice:
work—for example, later editions of a
“Author grants Publisher the right to
periodical, such as the final edition of a
publish the work through any media
newspaper, and
deemed appropriate by the Publisher.”
• a publication of a later collective work
More and more publishers are requiring
in the same series—for example, a
freelancers to transfer all their rights. Of
new edition of an encyclopedia or
course, this includes their electronic rights.
dictionary.
Any other use of the material requires
Ownership of Electronic
permission from the freelancer.
Rights in Older Works
As a result of the Supreme Court’s Tasini
decision, hundreds of thousands of freelance Modern publishing agreements include
articles written before the mid-1990s were
specific provisions regarding owner ship of
removed from electronic databases because
electronic rights. However, older agreements
the databases didn’t want to pay for permis- may have nothing on the subject, because
sion to use them. Partly because of Tasini,
the technology wasn’t known or anticipated
it is now a nearly universal practice for
at the time. In this event, it can be very
newspapers, magazines, journals, and simi-
difficult to determine who owns the
lar publications to demand that freelancers
electronic rights. This happened in a case
transfer their electronic rights. This can take involving the famous writers William
one of several forms:
Styron, Kurt Vonnegut, and Robert B.
• The freelancer can be required to sign
Parker. They granted Rosetta Books the
an assignment transferring all his or
right to publish digital versions (ebooks)
her copyright rights to the publisher.
of several of their novels. Several of the
• The freelancer can be required to sign a books had previously been published by
work-made-for-hire agreement—in this Random House. Random House had signed
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 221
written contracts for the books providing
As this case shows, interpreting a publish-
that it had the exclusive right to “print,
ing agreement can be tricky. So, unless the
publish, and sell the work in book form.”
written agreement clearly covers electronic
Random House claimed this meant it had
rights, it is wise to seek legal assistance to
the exclusive right to publish the works as
determine who has the right to publish the
ebooks. Random House sued Rosetta for
work in electronic form.
copyright infringement and lost. The court
held that the contract language did not
include ebooks. The court noted that, in
Transfer Documents
the publishing trade, this clause is generally Virtually all book publishers—and
understood only to grant a publisher the
many magazines as well—have standard
exclusive right to publish a hardcover trade
publication agreements they ask authors
book in English for distribution in North
to sign. Such contracts usually are written
America. ( Random House, Inc. v. Rosetta
by lawyers who have the publisher’s best
Books LLC, 283 F.3d 490 (2d Cir. 2002).)
interests in mind, not the author’s. If you’re
an author, be aware that many of the
Paying Authors for Online
provisions in such agreements normally are
Uses of Their Works
subject to negotiation. The topic of author-
publisher contract negotiations is beyond
One difficult problem facing authors and
the scope of this book. Excellent sources on
publishers is how to pay authors for online
this topic include:
uses of their works. One approach is to
• The ASJA Guide to Freelance Writing, by
form agencies to handle electronic licensing
the American Society of Journalists and
and royalty collection for freelance
Authors, Inc. Contains a recommended
magazine and newspaper articles. Such
standard letter of agreement between a
collective rights agencies have long been
freelancer and a magazine, the ASJA’s
used to license music. At least one such
code of ethics, and chapters on sel ing
collective rights organization has already
books and articles.
been established: the Authors Registry, set
• Kirsch’s Handbook of Publishing Law,
up by the Authors Guild and the American
by Jonathan Kirsch (Acrobat Books),
Society of Journalists and Authors.
contains a very thorough discussion of
email: [email protected]
publishing contracts and an annotated
212-563-6920
www.authorsregistry.org
sample form.
222 | THE COPYRIGHT HANDBOOK
Sample contracts and useful advice on all transfer agreement is called an assignment,
aspects of publishing (including finding a
a license, a contract, a grant of rights, or
good agent) can also be obtained from the
nothing at all.
following writers’ groups:
Whatever a transfer agreement is called,
• The Authors Guild, Inc., 31 East
it is important that it be accurate and
32nd Street, 7th Floor, New York,
complete. Listed below are the minimum
NY 10016, 212-563-5904, www.
provisions a transfer agreement normally
authorsguild.org. The Guild publishes must contain to be legally binding:
an extensively annotated sample
• the names and addresses of the
trade book contract available only to
copyright owner and person or entity
Guild members. There is a publication
acquiring the copyright right(s), and
requirement for membership.
• a description of what rights are being
• The National Writers Union, 256 West
transferred in what work. If the
38th Street, Suite 703, New York, NY
copyright owner is transferring all his
10018, 212-254-0279, www.nwu.org.
or her rights, the following phrase may
This national writers’ organization has no
be used: “John Smith hereby transfers
publication requirement for membership.
[or assigns] all his right, title, and
interest in the novel entitled Greed
Transfer Agreement Must Contain
to Mary Jones for the full copyright
Certain Minimum Provisions
term.” If less than the entire bundle of
copyright rights is being transferred,
If you encounter a situation where you
the agreement must clearly state which
need to draft your own transfer agreement,
right(s) are involved.
there are certain basic requirements that
must be satisfied. To be valid, an exclusive
EXAMPLE 1: Mil ie, a beginning freelance
license or assignment must be in writing
writer, writes an article on dog training.
and signed by the owner of the right(s)
Desperate to sell her work, Mil ie grants Dog’s
being transferred. However, in the case
Life Magazine all world rights. One year after
of a transfer between an employer and
the article is published, Mil ie contacts Dog’s
Life and asks them to reassign the rights in
employee, the agreement must be signed by
the article to her so she can use it in a book
both parties.
she’s writing on dog training. The Dog’s Life
A transfer agreement can take many
editor agrees to do so for a nominal sum and
forms. It may be a formal contract, a
tel s Mil ie to send her a transfer agreement
letter signed by an author, or a signed
to sign. Mil ie drafts the fol owing copyright
memorandum. It makes no difference if a
assignment.
CHAPTER 8 | TRANSFERRING COPYRIGHT OWNERSHIP | 223
Copyright License
Copyright Assignment
Dog’s Life Magazine, Inc. , for value received,
Dog’s Life Magazine, Inc. , for value received,
grants to Mil ie Vanil y all right, title, and
grants to Mil ie Vanil y an
interest in the copyrightable work described
■■ exclusive license
as fol ows: the article “Dog Dos and Don’ts,”
■■ nonexclusive license to
published in the Nov. 30, 20xx, issue of Dog’s
■■ reproduce
Life Magazine at pp. 34-39.
■■ distribute
■■ create derivative works from
Dog’s Life Magazine
■■ publicly perform
■■ publicly display
Edith Editor
the fol owing copyrightable Work: the article
Editor-in-Chief, Dog’s Life Magazine
“Dog Dos and Don’ts,” published in the Nov.
April 1, 20xx
30, 20xx, issue of Dog’s Life Magazine at pp.
100 Park Avenue, New York, NY 10010
34-39.
Mil ie Vanil y may sublicense the rights
Millie Vanilly
granted in this agreement without Dog’s Life
March 25, 20xx
Magazine’s written consent.
10529 Grub St., Marred Vista, CA 90000
This license is made subject to the fol owing
terms and conditions: the Work may only
be used as part of the book by Mil ie Vanil y
tentatively titled “Dog Training Dos and
FORM
Don’ts,” however it may be exploited in any
language or medium now known or later
You can download this Copyright
invented, including, but not limited to, print,
Assignment (and all other forms in this book)
microfilm, and electronic media and in
from this book’s companion page on Nolo.com;
translations in al languages.
see the appendix for the link.
Dog’s Life Magazine
EXAMPLE 2: Assume that Dog’s Life Magazine
Edith Editor
in the above example refuses to grant Mil ie
Editor-in-Chief, Dog’s Life Magazine
the entire copyright in her story. Instead, it
100 Park Avenue, New York, NY 10010
agrees to give her only a nonexclusive license
Date:
to use the story in her book on dog training.
This means that Dog’s L
ife Magazine retains
Millie Vanilly
all other rights in the story and can reprint
10529 Grub St., Marred Vista, CA 90000
it or sell it to others. Dog’s Life’s editor drafts
Date:
the copyright license below for Mil ie to sign.
224 | THE COPYRIGHT HANDBOOK
FORM
state to state. This section highlights some
You can download this Copyright
basic principles. You’ll need to consult an
License (and all other forms in this book) from
attorney to answer specific questions about
this book’s companion page on Nolo.com; see
how the laws of your state operate.
the appendix for the link.
Copies. You should have the transferor
Copyrights as Community Property
sign three original transfer documents: one Nine states have community property laws:
for him, one for you, and one to record with Arizona, California, Idaho, Louisiana,
the Copyright Office.
Nevada, New Mexico, Texas, Washington,
and Wisconsin (in all but name). Under
these laws, unless they agree otherwise, a
CAUTION
husband and wife automatical y become joint
This section describes the minimum owners of most types of property they acquire provisions a transfer document must contain
during their marriage. Property acquired
to be legally valid. Unlike the examples, most
before or after marriage is separately owned.
publishing contracts contain many additional
A court in the most populous community
provisions that have nothing to do with
property state—California—has held that
copyright—for instance, provisions regarding
a copyright acquired by one spouse during
royalties, delivery of manuscript, a warranties
marriage is community property—that is,
and indemnities clause, and many others.
is jointly owned by both spouses. ( Marriage
of Worth, 195 Cal.App.3d 768, 241 Cal.
Rptr. 135 (1987).) This means that if you are
Marriage, Divorce, and
married and reside in California (or later move
Copyright Ownership
there), any work you have created or will create
automatical y would be owned jointly by you
Like everybody else, writers and other
and your spouse unless you agree otherwise (see
copy right owners get married and get
below). This amounts to a transfer of copyright
divorced. A copyright is an item of personal ownership by operation of law.
property that must be given to one spouse
or the other, or somehow shared, upon
The Copyright Handbook Page 39