Wednesday, May 30, 2012


     “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.
    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
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. 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). 

     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).     

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