Estados Unidos

The debate on who should control these rights continues, particularly in the light of the now all-pervasive reach of the internet and the advent of e-books.

Publishers have long argued that verbatim electronic rights, i.e. the repro-duction of the work electronically without the addition of audio and video 34 The publishing contract

components and other adaptations, should lie with the publisher, since to license them separately would result in a directly competing edition, and many publishers might well wish to make the work available in this form them-selves. The question of payment arrangements to the author for publication in this form are a matter for negotiation between the parties, and much will depend on the form and purpose of publication (commercial and revenue-generating, or promotional), whether the work forms part of a larger overall work, and whether the author is required to undertake additional work to assist the publication in electronic form.

There was initially a perception on the part of some authors and agents that electronic publishing is a cheap option for publication, since it involves few or no manufacturing and inventory costs and low distribution costs. This leaves out of the equation the substantial costs incurred by the publisher in digitiza-tion, and in some cases the very high costs of maintaining a large body of content (e.g. back and current issues of academic journals) in a form suitable for direct supply to customers from its own server, and providing back-up and troubleshooting services to those customers. Perceptions may start to change now that the major trade publishers are starting to embark on mass digitization of their content; in January 2006 a meeting was held between the UK Publishers Association, the Society of Authors and the Association of Authors’ Agents to discuss how digital rights should be covered in contracts; both sides recog-nize that changes in attitude and practice will be needed to take advantage of new digital opportunities and seek voluntary guidelines.

Some authors (particularly in the computer book field) are keen to post advance extracts from their next books on their own websites to invite comments from colleagues and potential readers. Others may wish to make extracts or the entire book available for teaching purposes on an intranet at their own academic institution. Any such plans should be discussed in advance between author and publisher in terms of the copyright implications and the potential effect on subsequent sales of the book of posting large amounts of material in this way. The author–publisher contract should certainly specify clearly what types of use the author is permitted to make of his own work in both print and electronic form.

The publisher might well wish to license the storage of a copyright work by electronic means to a third party, e.g. a document supply centre, to enable that centre to deliver copies of selected material either in hard-copy form by mail or fax, or by electronic means if the licence allows for this. Another form of licence could be a site licence to an academic institute or a consortium of such institutes, to enable staff and students to browse and print off material.

These are only two forms of electronic reprography (see Chapter 23). There is also the question of allowing material to appear via search engines such as Google or via the websites of electronic retailers such as Amazon, uses viewed by such companies as promotional but which may impact on the original edition (see Google and others: threat or opportunity? in Chapter 23). If publishers are 1111

to participate in such programmes, they need to be sure that they control the right not only to license the whole work electronically but also to allow others to use extracts and to undertake electronic marketing; the question of third party copyright material embedded in the text also arises.

There could be other uses which fall into the category of subsidiary rights;

for example, a licence to a third party to include part or the whole of a work in a large electronic database available either on CD-ROM or online. Other subsidiary rights that should be the subject of licence arrangements if under-taken by third parties are digitization, screen display, performance (e.g. if screen display takes place in front of a number of people, as in a lawyer’s office when clients are present), transmission, networking, downloading, storage, the print-ing out of hard copy and the possible manipulation of text, either by changprint-ing it or by using it as ‘cut and paste’ in the context of other materials – this has implications for the right of integrity in the work.

The last ten years have seen the advent of e-books in the form of down-loading works via websites such as those run by Amazon on to a variety of devices such as laptops, personal digital assistants (PDAs) such as PalmPilots and now ‘smart’ mobile phones; to date, dedicated reading devices such as the RocketeBook and Franklin’s eBookman have not proved successful. This area is discussed in more detail in Chapter 24. The question of whether this type of publishing constitutes a primary publishing right or a subsidiary right is a vexed one and the topic still provokes debate. Most publishers hold that it is a primary publishing right, using alternative channels for delivery of the content of the book, and, if controlled elsewhere, could have a damaging impact on sales of the main edition. It would then follow that the author should receive a similar royalty percentage on the price of the electronic version as for the print version, rather than a share of a subsidiary rights royalty. Pricing policies for e-books versus print editions have varied from publisher to publisher, with some charging a higher price for the electronic version (on the grounds that this has the advantage of searchability) and others charging a price one-third to one-half lower than that of the print edition.

In the case of electronic publishing or licensing in forms that involve the addition of other aspects such as illustrations, animation, sound effects, music, video clips or an interactive facility, the control of rights should be a matter for negotiation between the author (or author’s agent) and the publisher. The high cost of multimedia development has meant that relatively few publishers have entered this field, and indeed some have withdrawn from it altogether.

Some publishers may still wish to enter into an alliance for investment and development with an outside partner such as a software house. As with all rights, control best lies with whoever is in a position to exploit those rights actively and in the interests of both parties. One solution may be to grant the rights to the publisher for a specified and relatively short period of time (e.g.

two or three years), to be retrieved if the rights have not been exploited.

36 The publishing contract

If electronic rights are to be included in the head contract, there should be careful discussion on whether these will permit the publisher either to exploit those rights directly or to license them to third parties, or both. The publisher could be granted electronic publication rights allowing them to

produce, copy, publish and sell, perform, display, broadcast and transmit the Work, whether in whole or in part, adapted or abridged, on its own or in combination with another work or works, together with any accom-panying sounds and images, in any electronic form and to license the foregoing rights in electronic versions of the Work.

Use of the material in electronic form by the publisher will be subject to rates of payment that are either specified in the contract (in which case it is advis-able to provide for review at regular intervals to ensure that the terms remain in line with current trade practice) or are left to be agreed when the exact nature of the electronic exploitation is known (for example, only part of the work may be used as part of a larger electronic project).

The division of licensing revenue from electronic rights may be specified in the head contract or (perhaps more appropriately) agreed with the author when the exact form and extent of the licensing usage is known.

It will be necessary to include a definition of the term ‘electronic form’, and this might read as follows:

Electronic form shall include, but not be limited to, off-line electronic storage and information retrieval systems of a digital, optical or magnetic nature including (by way of example and not limitation) floppy disk, CD-ROM, CD-I, DVD, ROM-card, compact disk, video, integrated circuit;

mobile and hand-held devices; online transmission by satellite and other means of telecommunication; and any other electronic means of reproduc-tion, publicareproduc-tion, dissemination and transmission, whether now in existence or hereafter invented.

The range of rights will have to be regularly reviewed in the light of new developments.

It can be seen that the financial arrangements for electronic and multimedia rights may vary considerably, according to whether the publishing house itself publishes a product or products in electronic form, whether it will enter into a joint venture, or whether it will license to an independent licensee. Much will also depend on whether the work concerned forms the main basis of the electronic product or only a small part of a larger product. The terms should also take into account whether the author is required to undertake additional work to assist with publication in electronic form. This remains a rapidly changing area where the author should be fully consulted on the potential exploitation or adaptation of the work in non-traditional form.

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Publishers should be aware of the continuing implications of an important case in the United States, Tasini v. The New York Times Co., where in October 1999 the Second Circuit Court of Appeal overturned a 1997 District Court ruling that publishers had the right to reuse full-text articles by freelance news-paper writers in online databases or CD-ROMs without seeking explicit permission from these authors. This has particular implications for publishers of encyclopaedias and reference works who may have employed writers to produce material for publication in print-on-paper form only. Publishers should never assume that electronic publishing rights are implicit in their contracts;

if there is any doubt on older contracts, it is vital to reach agreement with the authors concerned. With new players entering the field, it is also advisable to check whether any rights already granted cover new forms of exploitation; for example, if audiobook rights have been granted to the publisher, does this cover the electronic downloading of audiobooks via websites such as Audible (see Chapter 20)?