In our previous post we talked about the relatively easy fair use call involved in the Brownmark Films case decided by the district court in Wisconsin. Before the court even got to that issue, however, it had to decide a procedural issue that has potential ramifications for scholarly publishing. Who can grant an exclusive license?
In the Brownmark case the original video that was allegedly infringed was, as most video and an increasing number of scholarly articles are, a work of joint authorship. That means that each copyright holder owns an equal and undivided share of the rights, and each can exercise those rights independently and authorize others to do so. Under long-standing precedents, each joint holder of a copyright can license the rights to third parties without the approval of the other rights holder, subject only to a duty to account to those other rights holders for any profits made. But in Brownmark the issue arose (as it has before) of whether or not the licenses given by a single co-owner of a copyright can ever be exclusive.
To illustrate the situation we are dealing with, lets assume there are three co-owners of copyright in a particular work, whom we will call A, B, and C. Let’s further assume that A and B are not involved in the transaction in question, or in the court case (as was the case in Brownmark). So, acting on his own, C gives a license (which he calls exclusive) to Y, who is now our licensee. Later on, someone comes along and allegedly infringes on the work and Y wants to sue. A potential plaintiff only has standing to bring a lawsuit, however, if they hold an exclusive right. So the accused infringer defends by saying that Y is not allowed to file the suit, since they could not have obtained an exclusive license from C because C did not own the entire right in the first place. This is the situation we must examine.
In an earlier case (called Sybersound v. UAV), the Ninth Circuit Court of Appeals held that a co-owner of a copyright could never give an exclusive license. This is the intuitive position, I think, because any license C gives to Y will still be subject to other licenses potentially granted by A and B to other parties. What sense does it make to call Y’s license exclusive if other people — even a great many other people — may also have the right to do exactly the same thing, simply by licensing that right from a different co-owner?
In spite of this intuitive appeal, the Brownmark court choose not to follow Sybersound. Their concern was that if there could not be an exclusive license, the licensee was left with no way whatever to enforce his right. While the judge admitted that it was linguistically odd to call a license “exclusive” even when there could easily be multiple parties licensed to exercise the same right, he felt that the alternative was worse, since it created a situation where no one was able to enforce the particular right (unless, of course, all of the co-owners agreed).
I don’t know if this split within the Federal courts will eventually reach the Supreme Court for resolution or not. But I do know that whichever way it goes, the situation for scholarly articles written by multiple authors is problematic. It is often the case that A, B, C and sometimes many others are authors of an article and therefore co-owners (assuming each contributed protected expression). Usually one author is designated a “corresponding author” and completes all the paperwork with the publisher. The question is what the corresponding author, as a co-owner of the copyright, is legally able to convey to the publisher. Whichever court we follow, the question proves difficult.
If we follow the Ninth Circuit, our corresponding author is not capable of executing an exclusive license; even if her entire interest is transferred to the publisher, the rights obtained thereby are not exclusive and another author could, for example, release the article on the Web under a Creative Commons license. And in that Circuit, the publisher would lack standing to even bring a lawsuit to defend the rights it thought it had obtained. But if we follow the Wisconsin District Court the situation is only marginally better. The license is now called “exclusive,” and the publisher could bring a lawsuit against an wholly unauthorized third party to prevent infringement. Nevertheless, it remains the case that other authors could grant licenses in spite of the linguistically-challenged “exclusive” license given by the corresponding author. So it is still possible that the publisher obtains an exclusive license and yet the work could be distributed world-wide under a CC license by another of the joint authors.
Publishers usually attempt to avoid this situation by asking the corresponding author to warrant that she has permission to grant the copyright transfer or license on behalf of all co-authors. This might be an effective technique, but unless the corresponding author actually has written permission from each co-author, it ultimately depends on the somewhat various state laws regarding “agency.” In other words, a federal court hearing an infringement case and faced with a challenge to the right of the publisher to bring the suit would need to look at the applicable state law and decide if the publisher was justified in relying on “apparent authority” in accepting the corresponding author as an agent for all the other authors. In the alternative, a publisher could insist that all joint authors sign the publication agreement, but in an age when scientific articles often have dozens of authors, this seems impractical as well.
The techniques of scholarly publishing have worked well for many years; I know of very few (legal) disputes that have arisen amongst co-authors over publishing an article. But as articles are credited to longer and longer lists of authors, and the Internet offers an opportunity for each of those authors to decide on a more direct form of distribution, the uncertainty reflected by the Sybersound and Brownmark cases threatens to become increasingly problematic.