Who Shall Own The Copyright In A Book Publishing Agreement?

WHO SHALL OWN THE COPYRIGHT IN A BOOK PUBLISHING AGREEMENT?

IVAN HOFFMAN, B.A., J.D.

Contrary to popular belief, there is no "rule" that dictates who shall be the copyright proprietor of either the text or graphics in a book publishing agreement. As with virtually all issues in any negotiation, these provisions are resolved upon the basis of who wants who more. Frankly, copyright ownership is merely one deal point in an author-publisher or artist-publisher deal and there are many other deal points.

But as part of that negotiation, there are many factors to consider, from both sides’ standpoint. Until the author, artist and publisher know the scope of those issues, meaningful negotiation is all but impossible since the parties often resort to emotional pleas that lead nowhere. Thus, this article will explore some of those issues, better to empower all sides in that negotiation. [Note: while there may be other copyright proprietor issues raised by other contributors to a book (such as an editor and so on), this article limits its discussion to only authors and artists since those are the most commonplace examples but the article applies to all such copyright proprietors.]

The Work Made For Hire Issues

Under the United States copyright act, there are specific rules as to when the requirements for a work made for hire agreement may be met. (Read "Work Made for Hire Agreements"). For the purpose of this article, a work made for hire agreement is not legally valid for an already existing manuscript but may be appropriate for an artist/illustrator who is going to be doing work on the project (read also "The Cover Artist/Illustrator Agreement"). If an author creates a manuscript on his or her own and then finds a publisher, the agreement cannot be a work made for hire since the publisher did not "specially order or commission" it nor is it generally able to fit into one of the expressly delineated categories of works that may be the subject of a work made for hire agreement.

On the other hand, since a publisher often "specially orders or commissions" cover art or illustrations to accompany an already existing text, such an agreement with an artist/illustrator may be the subject of a work made for hire agreement.

If rights are acquired by a publisher under a work made for hire agreement, then the publisher is the sole and exclusive owner, indeed is deemed to be the "author" of those rights and the creator has no rights other than what is set forth in the written agreement between the parties. If on the other hand the work made for hire does not apply, then the ownership of the copyright is a negotiable deal point.

It is well to keep in mind that in any deal, even in a work made for hire arrangement, it is incumbent on both sides to negotiate all other terms including but not limited to compensation. Merely denominating an agreement a work made for hire does not, in and of itself, resolve these other issues even if the copyright ownership issue is foreclosed.

If Not A Work Made For Hire, Then What?

If the publisher is not able to acquire rights via a work made for hire agreement, then the publisher must obtain rights via some other form of written agreement with either the author or artist or both if the publisher is to acquire exclusive rights to their work. It is *essential* that the publisher realize that if the publisher does not have a valid, *written* agreement signed by the creator, the publisher obtains only non-exclusive rights, which as a practical matter, may mean virtually no rights at all since non-exclusive rights are often not marketable. Read “A Legal Nightmare: The Unwritten License” and “A Legal Nightmare: The Unwritten License-Further Issues.” I am continually amazed at how many publishers do not have valid, written agreements with either authors, artists or both. (Read "The Need for Vision"). And here is where the issues about copyright ownership arise.

If The Author/Artist Retains The Copyright

If the parties agree that the author and/or artist is to retain the copyright, then the question arises as to who has the obligation to register that copyright: the owner or the publisher. While it may be customary for the publisher to do this in the name of the author/artist, it is not mandatory and it is subject to negotiation. The publisher should protect itself here with appropriate disclaimers and provisions regarding the scope of this obligation should the publisher take on this responsibility.

Most importantly, the publisher must have appropriate provisions within the written acquisition agreement providing for the publisher to have, exclusively, all of the rights necessary for the publisher to fully exploit the work, notwithstanding that the creator retains the right of copyright. This is essential and any publisher that does not provide for this in that written agreement may be in for some significant legal trouble down the road.

The author and/or artist still retains the right to terminate the underlying contract during the window provided by the copyright law as to terminations of transfers. See further discussion below and read “Terminations of Transfers”.

If The Publisher Is The Copyright Proprietor

But even if it turns out that the publisher becomes the copyright proprietor of either the text or the artwork, then the publisher must realize that under the United States copyright law the creator of the work retains the right to terminate the transfer of that copyright and any contract in which such transfer took place at a time roughly 35-40 years later. There are some very specific rules regarding how and when and by whom such termination may be effective and what is and is not returned to the creator but these rules are beyond the scope of this article except to say that the right to terminate does not exist if the original agreement was a valid work made for hire agreement. (Again, read “Terminations of Transfers”). However, the net effect is that if the publisher obtains the copyright the publisher is then subject to having to give up that copyright at that later time. This author or artist is given this right of termination for the same reasons as that party was given the right to the renewal copyright under the 1909 Copyright act. The theory was that after 28 years (under the old act), the original creator was now a more wiser soul and should be relieved of his or her original foolish act of granting away the copyright. I would not necessarily agree that giving up the copyright was a foolish act since it is simply part of the negotiation process. What would be foolish is for either party in that negotiation to not be represented by knowledgeable counsel in the process so that that party can make an *informed* decision about this and other issues.

The law does not allow the author/artist to contract away, in the initial contract, the right of termination so the publisher is stuck with that potential loss of copyright at that time.

But does it matter what happens in 35 or 40 years? Most folks cannot project out that far down the line (see again, "The Need for Vision") and yet I would suggest that you give some thought to books that are now perennials, that continue to sell decade after decade, that once might have been unknowns. And art work? What about some of the famous "acid rock" posters that graced the marquees of the concert halls in the 1960’s that have now become collectors items?

Conclusion

Irrespective of which party retains ownership of the copyright, it is incumbent on all parties to effectively negotiate for their participation in the compensation that might be derived from that copyright. Free market capitalism still prevails and unless each party knows its rights and is effectively represented in the negotiation, valuable rights may be lost. No one gets anything without asking. The author, artist and publisher must be sophisticated enough in their negotiations to provide for virtually all contingencies including but not limited to what happens to the copyright under certain circumstances.

When I represent publishers, authors or artists in deals, I argue strongly for my client to retain the copyright. The negotiating position of both sides have equal merit and nothing compels a solution one way or the other—nothing except the power of the bargain. Authors, artists and publishers should focus on how to strengthen their relative bargaining positions and learn what is and is not important in a deal. All creativity is unique and there are no "standard" deals nor any carved in stone rules. The best deals are made by the party that can say "No."

And if authors, artists or publishers do not know what the parameters of a deal are, they should be represented by someone who does and can advise them accordingly. There are no laws that have replaced the need to act with personal responsibility and dignity. If you do not invest in yourself, within the four corners of the negotiation, you have only yourself to blame.

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This article is not intended as legal advice and is not legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States law. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.