The Digital Devil's In The Detail

One of the most disturbing rulings occurred this week in the court of US Judge Naomi Reice Buchwald and relates to a case of copyright infringement brought by HarperCollins in 2011 against Open Road in relation to the ebook publication of Jean Craighead George’s 1973 bestselling children’s book ‘Julie of the Wolves’.

The judge ruled that the original contract which was signed in 1971 differed to that of the 2001 ruling in Rosetta vs Random House and clearly granted HarperCollins exclusive right to licence electronic publications as then in 1973 and into the future. They still needed George’s permission to make any electronic rendition but they retained the exclusive licence right irrespective of whether George agreed or not. In this case George did not accept the terms and went to Open Road. George sadly passed away in 2012.

The actual wording difference between to Random House and HarperCollins contracts with respect to future technology and electronic rights appears to be clear to the judge and focuses on ‘in the future’. It has probably sent every trade house into a legal frenzy of activity on checking their digital clauses in their key and boilerplate contracts. As to whether this was the standard boilerplate contract term in the day, or a specific one honed for this contract, only the parties know. However, it would appear a very generous open ended clause for the agent to accept in those days and at a time when digital was clearly not even much more than a distant dream.

A contract is a contract and a ruling such as this brings both clarity for some and ambiguity to others. It however raises once again the question of the fairness and equity of contracts and whether they should be in perpetuity, tie both physical and digital to sales and inventory and can be so open as to cover anything and everything into the future. Some would suggest that you acquire as much rights as you can and use as little as is necessary. Today some would claim that excessive rights are demanded and that some subsidiary rights are not being fully exploited as a result. We have long argued that digital rights should be term based, not in perpetually and should apply on a back to back basis to both the agent and publisher contracts.  Also a pbook may not be the same as an ebook in the future, digital ‘sales’ are potentially going to become subscriptions and licences and therefore have different parameters of success and longevity. Digital may be published first with the physical having to justify print. On demand makes a mockery of inventory. It may be wise to contractually cleanly separate digital and physical and not muddy them under ‘published in any format’ catch all’s.

Whatever happens the backlist and orphan works position is probably going to get murkier before it gets clearer. Contracts that were once signed under the understanding of the day may now find themselves being dusted down to face a whole new brave world they were never really designed to cover. Governments may bring in regulated orphan ‘land grabs’ based on some due diligence, but again this doesn’t address the fundamental void of there being no rights authentication database. Books are not alone in this issue and our whole internet infrastructure would appear to be based not on validation and authentication, but on ‘catch me if you can’ and ‘safe harbour’ and take down notices.

The Ghost of Christmas Past

Perhaps someone at HarperCollins had just read 'A Christmas Carol' and wanted to be Scrouge and to be visited in the night by the ghosts of Authors Past, Present and Future.

As reported in Publishers Weekly, HarperCollins decided to dump a Christmas infringement present on Open Road in the form of a lawsuit on 23rd December. The suit is over Open Road’s publication of the e-book edition of Jean Craighead George’s bestselling and award-winning children’s book Julie of the Wolves which has sold some 3.8 million copies. The charge is that in 1971, George entered into a contract that gives HarperCollins exclusive publishing rights of the work “in book form,” and that this extends to ebooks by the inclusive clause “computer, computer-stored, mechanical or other electronic means now known or hereafter invented.”

HarperCollins also refer to “stated limitation of paragraph 20” of its contract, which refers to them having to seek George's consent to license rights in the work by stating that that does not permit the right for the work to be taken elsewhere. It is reported that Harpercollins is seeking an injunction against Open Road distributing any more copies and the destruction of copies.

Sometimes one has to take a firm stand to protect one’s rights and ensure that your investment is also protected. Other times one has to recognise that time has moved on and the intent you entered into in an old contract has long changed. The exercise can become more about flexing muscles and posturing to influencing others than about the individual case.

It is interesting to note that Jane Friedman, who set up Open Road, previously worked as CEO of HarperCollins.

The challenge could be that in 1971, some 40 years ago, the spirit of the contract that was entered into does not reflect the reality today’s today’s networked world. It was even before the PC, let alone the internet. However proving unworkable or unreasonable clauses, costs money and is not guaranteed an outcome.

The action could well win the battle for HarperCollins to retain their rights. There may be a out of court licence settlement, which effectively also may gag all parties, as like the earlier Random House versus Rosetta and also may act to stifle others looking to break free of the physical handcuffs. The declaration of war is however a far greater challenge for HarperCollins as it declares its stance not only on this one title by all those thinking about digitally moving on. It also sets an alarming precedent at a time when digital rights are being negotiated and warns all to avoid open 'catch all' clauses that may come back to haunt them in the future.

As we have seen News Corp is not adverse to bad publicity and this move is certainly not going to enamour them to many.