What happens when there is no publication agreement?

Scholarly communication discussions and debates usually focus, quite obviously, on the terms of publication agreements and the licenses those agreements often give back to authors to use their own work in limited and specific ways.  This is such a common situation that it is hard to realize that it is not universal for scholarly authors.  But recently it has come to my attention that some authors actually never sign any agreement at all with their publishers, and in one situation that I will explain in a moment, that led to a dispute with the publisher about whether or not the author could place her article in an institutional repository.  The issue, broadly speaking, is when an implied license can be formed and what such licenses might permit.

In a couple of previous posts, I have discussed the idea of implied licenses: licenses that are formed without an explicit signature, usually because someone takes an action in response to a contractual offer, and the action is clear enough to manifest acceptance of that offer.  One of the most common implied licenses that we encounter underlies the transaction every time we open a web page.  Our browsers make a copy of the web page code, of course, and that copy implicates copyright.  But our courts have held that when someone makes a web page accessible, they are offering an implied license that authorizes the copying necessary to view that webpage.  No need to contact the rights holder each time you want to view the page, and no cause of action for infringement based simply on the fact that someone viewed a page and therefore copied the code, temporarily, in their browser cache.

It is important to recognize that such licenses are quite limited.  An implied license can, at best, be relied upon when doing the obvious acts that must have been anticipated by the offeror, such as viewing a web page.  An implied license would not, for example, authorize copying images from that website into a presentation or brochure; that would be well beyond the scope of an license implied by merely making the site available.  For those sorts of activities, either permission (an explicit license) or an exception in the copyright law would be needed.

So how might implied licensing help us untangle the situation where an author has submitted her work to a journal, and the journal has published it without obtaining an explicit transfer of right or a license?  As I said, this is a reversal of the normal situation, and it caught me by surprise.  But I have heard of it now from three different authors, all publishing in small, specialized journals in the humanities or social sciences.

The way the question came to me most recently was from an author who had published in a small journal and later asked, because she had no documentation that answered the question, if she could deposit her article in an open repository.  The publisher told her that she could do so only after obtaining permission from the Copyright Clearance Center, and she came to me, through a colleague, asking how the publisher could insist on her getting permission if she had not signed a transfer document.  Could the publisher, she asked, claim that the transfer had taken place through some kind of implied contract?

The answer here is clearly no; the copyright law says explicitly, in section 204, that “A transfer of copyright ownership… is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.”  So an implied transfer of rights is impossible; all that can be conveyed implicitly is a non-exclusive license (as in the web site example).

In the case of my author with no publication agreement, she remains the copyright holder, whatever the publisher may think.  At best, she has given the publisher a non-exclusive license, by implication from her act of submitting the article, to publish and distribute it in the journal. This is not really all that unusual. I have written opinion pieces for several newspapers in the past and never signed a copyright transfer; the pressure of daily publication apparently leads newspapers to rely on this kind of implied license quite frequently.  But it is unusual in academia, and requires some unpacking.  No transfer of copyright could have occurred by implication, so the rights remain with the author, who is free to do whatever she likes with the article and to authorize others to do things as well.  The publisher probably does have an implied license for publication, but that license is non-exclusive and quite limited.

As we worked through this situation, three unanswered questions occurred to me, and I will close by offering them for consideration:

  1. Are authors always correct when they tell us they did not sign a publication agreement?  Sometimes an agreement may have been forgotten amidst all the paperwork of academic life, or the agreement might have been online, a “click-through” contract at the point of submission.  We need to probe these possibilities when confronted with the claim that no agreement was signed, but those are very delicate conversations to have.
  2. Returning for a moment to the possibility of a click-through agreement that the author could have forgotten, we might also ask if this type of arrangement, increasingly common among academic publishers, are really valid to transfer copyright.  I am well aware that courts are becoming quite liberal in accepting online signatures and the like, but is there a limit?  Where there is a statute that explicitly requires a signed writing for a specified effect, as the Title 17 does for assignment of copyright, could an author challenge the sufficiency of a (non-negotiable) click-through agreement?  I expect that this issue will eventually come before a court (if any readers who know of such cases, please add the information in the comments), and I will be very interested in that discussion.
  3. Finally, what do we make of the journal’s claim, in the situation I was asked about, that the author must purchase permission to use her own work from the Copyright Clearance Center?  If there was no transfer of rights, the journal has no right to make such a demand and the CCC has no right to sell a license.  This is one more situation where it seems that the CCC is sometimes used to sell rights that are not actually held by the putative licensors, and it renews my concern about whether, and when, we actually are getting value for the money we spend on licensing.

8 thoughts on “What happens when there is no publication agreement?”

  1. With regard to point 1: are publishers always correct when they tell us they have a signed publication agreement? Ask the publisher for the signed agreement. If they cannot show you the agreement, you still own copyright.
    Although copyrights are a valuable asset for a publisher, I wonder whether all publishers keep good records of the signed agreements.

  2. Surprisingly common (even with law journals!) I’ve run across this four times in the last two months, so I don’t believe your experiences are unusual.

    The implied license is indeed narrow. I thought it might be worthwhile to cite for other readers the statutory language that defines the limited scope of the implied license: Section 201(c) of the Copyright Act states that “In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work [such as a periodical issue, anthology, or encyclopedia] is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”

    1. I might say “Surprisingly common (especially with law journals!”

      When I asked why certain law journals did not require copyright transfers, I was told that “No good lawyer would ever sign a standard publishing agreement.”

  3. I had a case recently where a campus author didn’t remember signing a copyright transfer. So I asked the publisher if they could share a copy. They did so quite quickly.

    It turns out that the author on our campus was not the lead author, and the lead author had signed for the group so they wouldn’t be bothered. So it’s worth checking with a publisher at least some times.

  4. Where there is a statute that explicitly requires a signed writing for a specified effect, as the Title 17 does for assignment of copyright, could an author challenge the sufficiency of a (non-negotiable) click-through agreement?

    In Small Justice v. Xcentric Ventures, 2015 WL 1431071 (D. Mass. March 27, 2015), the court held that the author of an online post at RipoffReport.com (published by Xcentric) had transferred ownership of the copyright in the post to Xcentric “by means of an enforceable browsewrap agreement.” Under the website’s terms of use, “[b]y posting information or content to any public area of [the ROR], you automatically grant . . . to Xcentric an irrevocable, perpetual, fully-paid, worldwide exclusive license to use, copy, perform, display and distribute such information and content.”

    The agreement left nothing to the original author, and thus an earlier attempt (by a state court) to transfer the copyright from the author to a third party failed.

    Here is the decision.

  5. Kevin, could you elaborate about how to handle decisions to put things on IR when faculty are fairly sure they didn’t sign anything (I’m talking about things 20 years ago say) and the journal might not even still be published… I don’t mind having the “delicate” conversation, but I think it is just clear that most people don’t really remember if they signed something. I sure don’t!

  6. Interested in hearing opinions on this scenario: The writer/rights holder makes changes to the publisher’s original contract, signs it and returns it, but receives no signed contract back from the publisher indicating acceptance or rejection of the new terms. Is the writer then held to the original terms of the contract, or is there is no valid contract at all?

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