To my clients and friends: The time has come. After many years, I will be retiring from the practice of law effective December 31, 2024. If you are a new or former client, please contact my colleague, attorney Alisha L. Jacobsen.
To my clients and friends: The time has come. After many years, I will be retiring from the practice of law effective December 31, 2024. If you are a new or former client, please contact my colleague, attorney Alisha L. Jacobsen.

Rights 101

Posted by on Sep 17, 2003

Everyone talks about them, but few really understand.  What are the “rights” you sell to a magazine or a publisher?

First, let’s review the basics.  You already should know that the author of an original work owns its copyright the instant it is “fixed” on paper, disk, video, photograph or other tangible medium (unless it was “work for hire,” see below).  Registration of the copyright with the U.S. Copyright office is NOT required, although registration confers additional remedies in the event of infringement.  A copyright notice also is NOT required, but should be used on publication to prevent claims of “innocent” infringement.

So what exactly is copyright?   Section 106 of the 1976 Copyright Act gives the owner of copyright the following four exclusive rights:

RIGHTS

1.     to reproduce the work in print copies or electronic form;

2.     to prepare derivative works (adaptations, screenplays, audiotapes, translations);

3.     to distribute copies (electronic or paper) of the work to the public by sale, rental, lease, or lending; and

4.     to perform or display the work publicly.

When you “sell” your work to a publisher, you actually are transferring or licensing one or more of these rights.   This grant of rights may be explicit (a written agreement) or implicit, and may be “one time only,” for a period of years, or for the duration of your copyright; it may be for print only, for electronic only, or a combination.  Ideally, all this should be specified in a publishing or contributor’s agreement.

Periodicals.   For example, you submit an article to Elevator Inspector Magazine (EI).  EI will publish your article provided it has not appeared anywhere else previously.  Therefore, you might assign EI Magazine “first North American serial rights” – meaning that the magazine has the exclusive right to be the first periodical to publish the article for distribution on the North American continent.   This is a licensing of Rights 1 and 3.

After publication by EI, you are free to license or assign these rights again, but obviously you never can again offer “first North American serial rights.”  You could, however, license “first British Commonwealth serial rights,” or “first South American serial rights.”  But what if you want to sell to another North American publication?  Simple:  you would assign “first reprint rights,” or “second reprint rights.”  Once again, Rights 1 and 3 are involved.  If the publisher doesn’t care how often it has been published, or where it has been published, you would simply offer “one-time rights” – meaning that the publisher may publish the article once.

Nowadays, of course, most magazines also have web sites and want to publish or archive the article electronically.  Ideally, this should be covered in your contributor’s agreement, as Rights 1 and 3 are involved.  Most such contracts will specify that the article may be kept online for a specific period of time without further compensation.  But what if you assign the rights to your work for print publication, and are silent about electronic rights?  This was addressed by the Supreme Court in the case of NY Times v. Tasini; the Court ruled that the New York Times only had the right to reproduce and distribute the authors’ work in the edition in which it first appeared and was not entitled to reproduce the work in on-line databases because these databases separated the work from its original context.  This means that unless specifically covered in a written agreement with the publisher, it does NOT have the right to publish your article electronically.

Book publishing.  The standard book publishing agreement will provide that the author licenses or assigns one or all of the above rights to the Publisher in exchange for compensation (royalties).  The license generally will be for the term of the copyright (life plus 70 years), but will revert to the author under the conditions set forth in the “out of print” clause of the agreement.  (In addition, since 1976, any author may terminate his or her grant of exclusive or nonexclusive rights after thirty-five years for post 1978 works.)

The “Grant of Rights” clause of the agreement will specify which rights granted, and will vary by type of work and publisher. Some publishers will require “all rights,” e.g., “all right, title and interest in and to the work, throughout the world, in perpetuity, and in any and all media of expressions now known or hereafter devised.”  Under this clause, Rights 1-4 are covered.  A less onerous Grant of Rights might state:  “all print publication rights in the Work in the English language, throughout the world, for the full term of the copyright in and to the Work.  All rights not expressly granted to Publisher are hereby reserved by Author.” In this clause, the Author is only giving up Right 1, and part of Right 3. More common is for the Author to license all “print” rights to the publisher (Right 1), plus “subsidiary” rights (Right 2) ¾ foreign, book club, electronic, film, audio, drama ¾ plus Right 3 (distribution).

Unless there is a specific reason not to do so, always try to retain as many subsidiary rights (under Right 2) as you can.  Even first novelists should be able to retain film and foreign rights.  Don’t skim over this clause — examine it closely, and, if necessary consult a lawyer or knowledgeable agent if you have questions.

Work Made for Hire.  There is a major exception to the principle of copyright ownership, where the actual author does not own any rights in the work.  In a “work made for hire” situation, the party for whom the work was prepared – a publisher or an employer – is the legal “author” of the work, and owns all four of the Rights.  Because of this, the Copyright Act recognizes it in only two cases:  (1) where an employee creates copyrightable work in the course and scope of their employment, such as a magazine or newspaper writer, or an ad agency copyrighter; or (2) when a writer creates a specially commissioned work AND the agreement to do so is in writing.

In summary, authors should know exactly what rights to license, and for how long. The rights you transfer should directly affect the price — the more rights, the higher the price.  (For example, it is reasonable to ask for a time limit on the publisher’s right to publish in digital format, with the requirement that additional compensation be paid for a renewal.)  The best approach is to be direct and specific about all of the rights involved, and — put it in writing!

© Daniel Steven 2003