Publishing and Electronic Rights - Part I

© John J. Tormey III, Esq. All Rights Reserved.

This article is not intended to, and does not constitute, legal advice with respect to your particular situation and fact pattern. Do secure counsel promptly, if you see any legal issue looming on the horizon which may affect your career or your rights. What applies in one context, may not apply to the next one. Make sure that you seek individualized legal advice as to any important matter pertaining to your career or your rights generally.

The following article addresses some of the issues arising as a result of the prevalence of e-mail, the Internet, and so-called "electronic publishing". As usual, the law governing these commercial activities has been slow to catch up to the activity itself. Yet most of the "gray areas" can be resolved by imposing old common-sense interpretations upon new industry constructs.

1. "Electronic Rights" Are Not Self-Defining.

All must be very careful about the use of jargon - publishing industry jargon, or otherwise. Electronic publishing is a recent phenomenon. Accordingly, there has not been sufficient time for the publishing, media, or entertainment industries to fully crystallize accurate and complete definitions of phrases like "electronic publishing", "web publishing", "electronic rights", "e-rights", "digital rights", or "first electronic rights".

Anyone who says that these phrases alone are already self-defining, is wrong.

Anyone who says that an author should do - or not do - something, because it is "industry-standard", should automatically be treated with suspicion and skepticism.

The fact of the matter is, this is a great era for authors, and they should seize the moment. The fact that "industry-standard" definitions of electronic rights have yet to fully crystallize, (if indeed they ever do), means that authors can take advantage of this moment in history.

Of course, authors can also be taken advantage of.

Every author should be represented by counsel before signing any publishing or other agreement, provided that their own economic resources will allow it. (But I am admittedly biased in that regard).

Even authors who cannot afford counsel, however, should avoid agreeing in writing to give broad contractual grants to publishers of "electronic publishing" or "electronic rights". Rather, in the words of "Tears For Fears", the author had "better break it down again". Before agreeing to grant anyone any of the author's "electronic rights", the author needs to make a list of all the possible electronic ways that the written work could be disseminated, exploited or otherwise used. Notice that the author's list will likely vary, month to month, given the fast pace of technological advancements. For example, these questions can be considered:

A. Can the work be published on the Internet? In the context of an "e-zine"? Otherwise? If so, how? For what purpose? Free to the reader? For a charge to the reader?

B. Can the work be disseminated through private e-mail lists or "listservs"? Free to the reader? For a charge to the reader?

C. Can the work be distributed on CD-Rom? By whom? In what manner and context?

D. To what extent does the author, himself or herself, wish to self-publish this work, either before or after granting "electronic publishing" rights therein to someone else? Will such self-publication occur on or through the author's website? Otherwise?

E. Even if the author does not self-publish, to what extent does the author wish to be able to use and disseminate this writing for his or her own portfolio, publicity, or self-marketing purposes, and perhaps disseminate that same writing (or excerpts thereof) electronically?

The above list is illustrative but not exhaustive. Any author will likely think of other uses as well, and the number of possible uses will increase as technology advances. In addition, different authors will have different responses to each of the carefully-itemized questions. Moreover, the same author may be concerned with electronic rights in the context of one of his/her works; but may not care so much in the context of a second and different work not as susceptible to digital exploitation. Therefore, the author must self-examine on these types of questions before entering into each individual deal. Only by doing so can the author avoid the pitfalls and perils of relying upon lingo, and relying upon someone else to dictate to them what is the "industry standard". There is no such thing as "industry standard" in the context of a bilaterally-negotiated contract! The only standard that author should be worried about is the motivational "standard" known as: "if you don't ask, you don't get"!

Finally, the author should be aware that while rights can be expressly granted, they can also be expressly reserved to the author. For example, if an author wants to expressly reserve the "portfolio uses" mentioned in Item #1 E above, then the author should clearly recite this reservation of author rights in his/her contract, and leave nothing to chance. In addition, if the author has some negotiating leverage, the author may be able to negotiate the "safety net" of a "savings clause" which provides words to the effect that: "all rights not expressly granted to publisher are specifically reserved to author for his/her sole use and benefit". That way, the "default provision" of the contract may automatically capture un-granted rights for the author's later use.

2. Publishers and Entertainment Companies Are Revising Their Boilerplate Agreements, As We Speak, In An Effort To Secure Electronic Rights.

It is well-known and should come as no surprise that right now, as we speak, publishers and their lawyers are furiously re-drafting their boilerplate contracts to more thoroughly capture all of an author's electronic rights. The typical publishing agreement will recite a broad grant of rights, then followed by a whole laundry-list of "including but not limited to" examples. If the author receives such an onerous-looking rights passage from a publisher, the author should not be intimidated. Rather, the author should look at it as an opportunity to make some money and have some fun. The author can first compare the list suggested in Item #1 above, to the publisher's own laundry-list. Then, the author can decide which if any of the separate rights the author wants to fight to keep for himself or herself.

If the publisher tells the author to blindly subscribe to their entire electronic rights clause (or clauses), then the author still has the ultimate leverage, which is to walk away from the deal. Of course, this strategic approach wouldn't be advisable in most cases - unless perhaps if the author has other written offers from other publishers already on the table. However, an author shouldn't be forced to sign away rights that the author would rather keep, particularly rights which the author never specifically intended to shop to the publisher in the first instance.

The author should keep in mind the psychology and motivations of the publishers when doing all of this. A Vice-President (or above) at the publishing company probably woke up one recent morning, and realized that his/her company lost a great deal of money on a particular project by not taking a prospective license or assignment of electronic rights from another author. The VP probably then blamed the company's in-house Legal Department attorneys, who in turn started frantically re-drafting the company boilerplate to assuage the angry publishing executive and thereby keep their jobs. When in-house lawyers engage in this type of practice (I call it "drafting from fear"), they tend to go overboard. Accordingly, what you will probably see is a proverbial "kitchen sink" clause which has been newly-drafted and perhaps even insufficiently reviewed - wherein the publisher will ask the author for everything, including (without limitation) the kitchen sink. The only response to such a broad-band clause is a careful, deliberate, and methodical reply. Using the approach outlined in Item #1 above, the author and the author's counsel must separately tease apart each of the rights and uses that the publisher's broad-band clause might otherwise capture, and then opine to the publisher a "yes" or a "no" on each line-item. In other words, the author should exercise his or her line item veto. It's the author's writing that we are talking about, after all.

The next installment of this article, Part II, will - believe it or not - have a few words in defense of the publishers!

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My law practice includes the field of entertainment. If you have questions about legal issues which affect your career, and require representation, please contact me:

John J. Tormey III, PLLC
217 East 86th Street, PMB 221
New York, NY 10028
(212) 410-4142 (phone)
(212) 410-2380 (fax)