Australia: Intellectual Property for Publishers

Originally Published February 2008

The legal issues which arise for magazine publishers are many and varied, from defamation through to advertising and trade practices concerns. This article however focuses on intellectual property and the acquisition and management of rights. It commences with an overview of the copyright principles which lie at the foundation of publishing rights. Against this background, it then examines rights issues for magazine publishers when dealing with contributors.

1. Copyright – the Basics for Publishers

In 2006 Random House, publisher of Dan Brown's The Da Vinci Code, was sued for copyright infringement in the English High Court. The plaintiffs, who were the authors and copyright owners of the book The Holy Blood and The Holy Grail, claimed that Brown's novel constituted a copyright infringement of their own work. Nowhere in The Da Vinci Code does any direct text from that other work appear. Nevertheless the plaintiffs argued that Brown had copied the "central themes" of their work, essentially ideas which they alleged that they had spent years researching and developing, and which were unique to them. In so doing, they argued, Brown had infringed the copyright in their work. The case is an interesting reminder on what copyright does, and does not, protect.

While there have been some subtle shifts in the law over time, it is still safe to say that copyright does not protect ideas in the abstract.¹ In a nutshell, that is what the plaintiffs suing Random House in the Da Vinci Code case were trying to protect, and why they were ultimately unsuccessful.² Copyright only protects certain defined classes of subject matter, in other words, tangible forms of expression which may themselves be the embodiment of one or more ideas. The protected classes of subject matter are set out in the Copyright Act 1968, and include literary works, artistic works, musical works, dramatic works, sound recordings, cinematograph films, and TV and radio broadcasts. From a publisher's point of view, the two most important categories are likely to be literary and artistic works, the latter of which includes photographs. The text of an article constitutes a literary work, while accompanying photographs will constitute separate artistic works. The published version of a magazine as a whole may, itself, be a literary work in which copyright subsists, separate to its constituent parts.

Copyright is not one "right", but rather a bundle of exclusive rights that the copyright owner may exercise in relation to a particular work. Those rights are the right to reproduce the work in material form, the right to publish the work, and the right to communicate the work (electronically) to the public.³ In the case of a literary work, it also includes the right to perform the work in public and to make an adaptation of the work. In publishing content in print, the publisher is essentially exercising at least two of these rights, namely the right to reproduce the work in material form, and the right to publish it.

Subject to certain exceptions, some of which are discussed below, the first owner of copyright is the "author" of the work in question.⁴ For a magazine article, the author will be the person who wrote the text of the article. For a photograph, the author will be the photographer.

The copyright in an artistic or literary work is infringed if a person, without the consent of the copyright owner does, or authorises the doing of, any of the acts described above which comprise the copyright.⁵ The legislation is not framed in terms of it being an infringement to "copy" a copyright work, although most copies, if made without the permission of the copyright owner, are likely to constitute a "reproduction in material form". For similar reasons, it is legally meaningless to talk in terms of the right to "use" copyright material. The right enjoyed by a copyright owner, and which can be licensed to third parties, is more accurately the right to do one or more of the acts comprising copyright in the work concerned.

2. Contributors

These general principles provide a convenient backdrop to an examination of the legal considerations that arise when dealing with contributors. Many publishers do not take enough care in recording their arrangements with third-party contributors, nor do they have standardised terms which they can use as a matter of course. While some contributed material has an inherently-limited lifespan, other material, particularly visual images, has significant potential for re-use over time. Consider how often a publisher commissions photographs for a story. How often does it occur to them that they used or commissioned very similar shots for another story a year or two ago, but they are unsure where the rights lie or whether they can re-use the material?

Generally if copyright material is created by an employee in the course of their duties, the employer will own the intellectual property in that material, although the Copyright Act does reserve certain rights to employed newspaper and magazine journalists, namely the right to include their works in a book, and the right to reproduce the work in the form of a "hard copy facsimile"⁶. The position of external contributors is different. In the absence of an agreement to the contrary, the principle that the author of a copyright work is the first copyright owner will apply. That often leaves publishers wondering what the extent of their rights in commissioned material is. It can also lead to disputes when a publisher uses the material for a purpose that the contributor feels wasn't intended or authorised at the time of commission. If there is no clear agreement on these matters, the contributor can often be in the better position by virtue of the presumption of copyright ownership.

The default position under the Copyright Act can be modified by agreement. Asking for a full copyright buyout as part of your arrangement with contributors can however be a touchy issue, and often may in fact not be necessary. An appropriately-drafted exclusive licence can secure almost all the same rights and ensure that a publisher has the usage rights it needs. If possible, contributor terms should include broad usage rights across all media and territories, irrespective of the fact that the scope of use contemplated at the time of commission may be for a specified publication or run of publications. The terms can provide for re-use fees if subsequent use is made which exceeds that originally contemplated. The major advantage in this approach is that the publisher does not need to seek the contributor's consent if it wants to re-use commissioned material for subsequent publications and projects.

When drafting a set of contributor terms, a number of other issues need to be considered. Liability issues, for instance, commonly arise. A publisher will be liable for defamatory material even in circumstances where they have extracted a warranty from the contributor that the material in question is not defamatory, although such a warranty may allow the publisher to seek compensation in turn from the contributor. While it is not always possible to obtain a warranty of this kind having regard to the subject matter in question, having standardised contributor terms affords the publisher the opportunity to put some groundrules in place to minimise risk. One example might be a requirement that the contributor confirm interview content with interview subjects prior to submission.

Moral rights are a set of non-economic rights granted to authors of copyright material, which sit alongside copyright rights. Moral rights essentially comprise the right to be attributed as the author of a work, the right not to have an author's work falsely attributed to another person, and the right not to have the work subjected to derogatory treatment. In 2005 Woman's Day published a photograph which contained a reproduction of a Vladas Meskanas painting, but the caption incorrectly attributed the painting to another artist. Meskanas successfully sued Woman's Day's publisher ACP for infringement of his moral rights. He recovered damages and costs, including some $8,000 in "exemplary" damages on account of the publisher's lack of corrective action after being put on notice of the error. It is not possible for an author to "assign" their moral rights to a publisher, however a publisher may, and should in the case of its contributors, extract a promise that the author "waives" their moral rights for the publisher's benefit. To be valid, such a waiver must be in the form of a consent from the contributor, authorising the publisher to do such acts as would otherwise constitute an infringement of the contributor's moral rights.

3. Conclusion

Intellectual property is a key asset in any publisher's business, and one that is often overlooked or undervalued. Hopefully this article has provided some insight into the complexities of copyright law and may assist publishers in conducting the worthwhile exercise of undertaking an IP "stocktake" of their business. We are more than happy to assist in that regard on an individual basis.

Footnotes

1. It is well-established that copyright infringement of a literary work can occur in the absence of a verbatim reproduction of the whole or part of the text. Elements such as plot, themes, characters and settings can be protectable in themselves if developed to a sufficient level of abstraction. For a more detailed discussion see for example Adaptations – Copyright Principles for Filmmakers, Independent Film (IF) Magazine, Issue #64, April 2004.

2. See the judgement and full reasons handed down by Mr Justice Peter Smith on 7 April 2006 for more information. The legal citation of the judgement is [2006] EWHC 719 (Ch). A Google search should readily locate it on the Internet. The judgement received a good deal of publicity at the time, not least because the judge mischievously included his own coded message in the judgement itself.

3. Copyright Act s 31.

4. Copyright Act s 35.

5. Copyright Act s 36.

6. Copyright Act s 35(4).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.