“Ignore it. It will go away.” That is the basic advice that I received from
several authors when I raised the issue of dealing with an upstart, er start up
publishing company that refuses to abide by two publishing contracts that it
drafted. Indeed, one of the terms of the contracts (same basic terms in both)
pertains to the duration of the assignment of rights. After the expiration of
the contract term, all rights revert. Accordingly, by simply waiting, the
problem will go away eventually. However, while I don’t covet instant gratification,
waiting is not in my nature, particularly when I’ve been wronged.
There are unilateral contracts where only
one party has any obligations, such as offering a prize for the successful
completion of an objective (e.g. winning a race). No one has to compete for the
prize, but if someone actually successfully completes the objective, then the
first party has to award the prize. Similarly, a party that acquires an option
to purchase something, has no obligation to make the purchase, but if it elects
to exercise the option, then the contract “ripens into a bilateral contract
under which both parties must fulfill their respective obligations as set out
in the option contract." Richard
D. Weinstein, Appellant, v. KLT Telecom, Inc., Respondent (Missouri Supreme
Court, SC87816, 2007).
A publishing contract is a “bilateral
contract under which both parties must fulfill their respective obligations”. A
bilateral contract is an agreement supported by mutual consideration (something
of value-either tangible such as cash or property, or in the form of a promise
to take or refrain from taking certain actions). A party cannot pick and choose
which provisions of the contract to follow and which to ignore. A publisher
cannot take the license to use an author’s copyright protected material unless
it is willing to follow and fulfill all of its obligations under the publishing
contract. Since many publishing contracts are heavily weighted in favor of the
publisher, even the smallest of rights granted to or retained by the author
constitutes an integral part of the publisher’s consideration supporting its
right to use the copyright protected material. Accordingly, a publisher
that fails or refuses to fulfill all of
its obligations under the contract is cheating the author. Therefore, the
author should not feel guilty about enforcing the author’s rights. An author
can always file a lawsuit alleging breach of contract, and in some cases, fraud
in inducement or anticipatory breach of contract. However, there are other
options.
I. THE DIGITAL MILLENNIUM COPYRIGHT ACT OF
1998
The
Digital Millennium Copyright Act of 1998
provides authors with a means for addressing electronic piracy of the
copyright protected materials. It provides procedures for service providers to follow
to identify and take down unauthorized works. A knowing failure to take down or
block access to unauthorized works could subject the service provider to
monetary damages.
An author who believes that the author’s
copyright protected material is being used improperly may send a take down
notification to a service provider (DMCA Section 512(c)(3)). If the service
provider removes or blocks access to the challenged works, then it is not
subject to monetary liability. Similarly, it is not subject to monetary
liability to a third party for taking down challenged material, unless the
service provider is served with a statutorily proper counter notification from
the posting service subscriber.
Title 17, Chapter 5 of the US Code (17 USC
Section 501 et. seq.) deals with
copyright infringement and remedies. Actions under this Chapter include
awards of monetary damages and attorneys fees. When dealing with a provider of
unauthorized copyright protected materials, the DMCA established procedures for
sending a takedown notice. Section 512(c)(3) provides: (3) Elements of notification.—
(A) To be effective under this subsection, a notification
of claimed infringement
must be a written communication provided to the
designated
agent of a service provider that includes substantially
the following:
(i) A physical or electronic signature of a person
authorized to act on
behalf of the owner of an exclusive right that is
allegedly infringed.
(ii) Identification of the copyrighted work claimed to
have been
infringed, or, if multiple copyrighted works at a single
online site are
covered by a single notification, a representative list
of such works at
that site.
(iii) Identification of the material that is claimed to
be infringing or to
be the subject of infringing activity and that is to be
removed or access to
which is to be disabled, and information reasonably
sufficient to permit
the service provider to locate the material.
(iv) Information reasonably sufficient to permit the
service provider
to contact the complaining party, such as an address,
telephone number,
and, if available, an electronic mail address at which
the complaining
party may be contacted.
(v) A statement that the complaining party has a good
faith belief that
use of the material in the manner complained of is not
authorized by the
copyright owner, its agent, or the law.
(vi) A statement that the information in the notification
is accurate,
and under penalty of perjury, that the complaining party
is authorized
to act on behalf of the owner of an exclusive right that
is allegedly
infringed.
http://www.copyright.gov/title17/92chap5.pdf
Failure
of an author to follow the above notice procedures means that the service
provided will not be charged with having requisite knowledge of any infringing
activities, and so will not be monetarily liable to the author.
The requirement that the notice be sent to
the “designated agent of the service provider” can be a little tricky. The
service provider should provide a link to its designated agent. If it doesn’t
have such a link on its site, the US Copyright Office maintains a list of
registered designated service provider agents.
http://www.copyright.gov/onlinesp/list/. If the service provider or vendor is
not listed, then the author should send the takedown notification to any “contact
us” link and any complaint and/or comment links (general or linked to the
specific work).
II. PEEKING BEYOND THE DIGITAL MILLENNIUM COPYRIGHT ACT OF 1998
You’ve
just sent your 238th take down notification, but Infringer-Alpha (“IA")
continues to post your copyright protected materials with impunity. Obviously
the monetary damages and attorneys fees available under the DMCA haven’t slowed
IA down. How would IA feel about triple damages? How would the service
providers that keep allowing IA serially to post your works feel about treble
damages? Are you really, really pissed off? Let’s talk civil RICO.
RICO, Racketeer Influenced and Corrupt
Organizations Act, 18 U.S.C. § 1964(a),
(b) and (c), provides for civil actions with triple damages as well as
attorneys fees. RICO actions are highly complex. However, the basic premise is
that entities that engage in patterns of illegal activities may be subject to
such actions. There have to be violations of certain criminal statutes. In the
case of the serial infringer IA, by posting author’s protected materials
without permission or right, arguably IA commits wire fraud, a proscribed
action that meets RICO requirements. By posting multiple times, arguably IA
engages in a pattern of such activities. In joining with service providers A
thru ZZZ, arguably IA creates an “association-in-fact enterprise” for the
purpose of conducting the wire fraud activities.
***
Sticking one’s head in the sand and ignoring
the actions of a publisher that fails to abide by its contractual obligations
doesn’t make a problem go away. Rather, it encourages the offending publisher
to treat other authors in the same manner. After all, as any ill-behaved child
knows, there is no reason to stop misbehaving until you’re caught and called to
answer for your misconduct. An author whose rights are being trammeled should
not merely run out the clock and wait for the contract to expire to recover
her/his rights. An offended author needs to draw a line in the sand. The author
should call the publisher on the publisher’s breaches of the publishing
contract both for the author’s sake, and for the sake of future authors. To
that end, I notified the naughty publisher that the two contracts were
terminated, and sent take down notices to the service providers hosting the two
works. Granted, a civil RICO action may be a bit over the top. However, if any author decides to go that
route, please send me a copy of the complaint.
CK Copyright 4/30/12; Moral rights to be identified as the author of
the foregoing article asserted worldwide (including in Great Britain in
accordance with Sections 77 and 78 of the Copyright, Designs and Patent Act of
1988) (See prior blog on Moral Rights).
