CUSTODY ISSUES FOR YOUR BRAIN CHILD WHEN DIVORCING YOUR PUBLISHER

     My alter ego, Ken Charles, recently terminated two contracts with a small publishing company. Once the Digital Millennium Copyright Act of 1998 notices worked their magic and the last of the vendors took down the works, I naively thought that was pretty much the end of the matter. However, just as I considered dipping my toe back in the publishing waters--this strange, foreboding music sounded--dum-dum, dum-dum, dum-dum, dum-dum. I received an email from the putative “editor” for the two works warning me that:

    "You are not permitted legally to publish any of my edits should you choose to publish either The Mercies of Cinderella or The Naughty Ladies of Cotton Glen. You do not have any rights to any of my edits."

Curiouser and curiouser, to say the least. 

     As a courtesy, I sent back a reply email explaining that the poor woman was confused for two basic reasons. First the “editor” was not in privity with the “author”. Simply put, I didn’t hire her. If she believed that she was entitled to some kind of compensation, then she had to seek it from the publisher that hired her. Second, she did not have any “intellectual property” interest in her putative “edits”. (This reply was not well received.)
 
Custody Issue One -- Who has rights to the work?
 
    The parties who have a claim to a work are those parties identified in the contract. In my case, the “editor" was not a party to either contract. Unless there is some kind of express provision granting a lien or some other kind of guaranteed payment or other rights to the “editor”, then the author has no obligation to the “editor”. Conversely, although the publisher’s “president” may sign the contract for the publisher, the “president”does not assume any personal liability for the publisher’s subsequent breach of contract. Accordingly, assuming that the contract properly expires or otherwise terminates by its terms, then the rights to the work should return to the author.  
 
     For example:
 
     In Shortcuts Editorial Services, Inc. v. Kaleidescope Sports and Entertainment, L.L.C. and Cybergenics America, L.L.C., 706 N.Y.S.2d 572 (2000), a production company hired a film editor to edit a technology firm’s television programming. When the production company failed to pay the editor, the editor sued the technology firm. The claims were denied. The court explained that it was not enough that the technology firm benefited from the editor’s work. The editing work was performed for the production company. The court concluded “if services were performed at the behest of someone other than the defendant, the plaintiff must look to that person for recovery.”
 
    Accordingly, applying the above reasoning, even if an author benefits from an editor’s work, if the editor is hired by the publisher, then the editor has to look to the publisher for compensation. The “editor” does not acquire an interest in the work following the termination of a publishing contract.
 
Custody Issue Two -- Who has rights to the “edits”?
 
     Basically, the author comes out of a terminated or expired contract with the same work s/he had going into it, with the extra added bonus of additional proofing. However, some contracts may provide that the publisher retains all rights to its “intellectual property” or copyrighted materials. So what additions to a work beyond the original submission belong to the author, and what belongs to the publisher or even the “editor”? Simply put, at what point does a work become a “joint work”?
 
          The U.S. Copyright Act (17 U.S.C. Sec. 101) defines “joint work” as:
    "A 'joint work' is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole."

The Act does not define the words “inseparable” or “interdependent”. 

     In Visitors Industries Publications, Inc. v. NOPG, L.L.C., 91 F.Supp.2d 910 (2000), the court explained:
    "Even if two or more persons collaborate with the intent to create a unitary work...the     product will be considered a 'joint work' only if the collaborators can be considered     'authors'. (Cite omitted.) In order to determine authorship, most courts have adopted the 'copyrightability test'.... 
Under the copyrightability standard, (a) collaborative     contribution will not produce a joint work, and a contributor will not obtain a co-ownership interest, unless the contribution represents original expression that could     stand on its own as the subject matter of copyright.
    (Cite omittted.) As quoted above, an author must contribute more than mere directions or ideas to a work to gain copyright protection under the Act; he must translate an idea into a fixed, tangible expression.
    
Simply put, the insertion of a missing word, or the correction of improper punctuation does not create “subject matter that will stand on its own as the subject matter of copyright", and so does not create a “joint work”. Even suggesting plot changes to an author will not turn an “editor” into an “author”.
    
     In the case of my terminated contracts, in one of the works, the publisher included this disclaimer:
    "Please note that final edits on this work are at the discretion of the Author. Our editors may make  suggestions we feel would improve the work and reader appreciation,     however, our editors are forbidden to change anything without Ken Charles' (sic) approval. This ebook remains an expression of his creativity and is published as directed by him."

In short, the publisher expressly disavowed any claim of authorship, or that the work was now a “joint work”.  The “editor” who made certain suggestions, some of which I adopted, did not become an “author” with a protected “intellectual property” interest in the work.
 
     I privately edited a book for an author who was badly pressed for time. We had worked on several projects together. When I made a number of suggestions, she instructed me to just go ahead and make the changes, which I did. Accordingly, my ideas were translated into “fixed, tangible expression(s)” that became “inseparable or interdependent parts of a unitary whole.” Arguably, I moved from the role of “editor” and became an “author” of a “joint work”.

CK Copyright 6/25/12; 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).