A Question Of Copyright

When a lawyer writes an article for a journal, newspaper, legal newsletter or other kind of collective work, the publisher typically asks the lawyer/author to assign the copyright in the article to the publisher. On occasion, the lawyer, or his or her firm, will insist that the lawyer retain the copyright in the article and instead will offer the publisher only a one-time license to publish the article. If this gap cannot be closed, the publisher will lose an article that would have benefited its readers (and its subscriber base) while the lawyer/author will lose a valuable marketing opportunity to reach potential new clients. Fortunately, when both sides understand the nature of what they are seeking and what they are giving and getting, and when both sides refuse to stand on ceremony, the copyright question should not be a bar to publication.
The Publishers' View
Legal publishers are in the business of selling their products. Toward that end, they generally believe that it is important i) for them to publish articles that have not been previously published by their competitors (a marketing and sales matter); ii) that articles that appear in their publications not be published elsewhere for some period following publication (an 'exclusivity' concern); and iii) that they have the right to use these articles in other media that they have or may develop (a Tasini issue). Therefore, they are likely to ask a lawyer/author to sign a copyright transfer form that 'transfers from [the author] to [the publisher] full ownership of the copyright, and all of the rights comprised therein, in this and all other media, to the [article].'
This kind of form will allow the publisher to publish the article and, because the publisher becomes the owner of the copyright, will bar future publication of the piece by a competitor (at least without the original publisher's consent). Kathleen Brady, a newsletter editor for Aspen Publishers, Inc., in New York City, points out that the form also will allow the publisher to use the article 'however it wants to without having to go back to the author for permission.' That means that the publisher will be able to include the article in the intended print publication and will be able to use it online, in a collection of related articles and as part of a 'best of' publication. The publisher also will be able to use excerpts for promotional purposes. As Brady says, the copyright transfer is important to publishers because 'if someone comes up with an idea about how to make more money with publishing, who wants to go through years and years of forms to see if it is permitted?'
The Lawyers' Position
When a lawyer assigns the copyright in an article to a publisher, the lawyer 'gives up control' of the article, says Greg Battersby, an intellectual property lawyer and partner in the Norwalk, CT office of Grimes & Battersby L.L.P. There is a 'lingering fear in a lawyer's mind that the article will be disseminated where he or she does not want it to be,' he explains.
Although that may be somewhat of an academic problem, a more significant control issue for lawyers is that they want to be able to use their article for certain purposes after it is published. For instance, they want to be able to make reprints of their published article to distribute to clients and prospective clients, place the published article on their firm's Web site, use the published article in educational programs and republish the article elsewhere. They may not be able to do any of this if they have granted the copyright to the publisher; hence, they seek to provide only a license to the publisher while retaining the copyright.
Lawyers recognize the value of article writing as a client development tool and understand that they need publishers to publish their articles to obtain that value ' and to be able thereafter to use it themselves for additional marketing purposes. But they also understand that it is no simple matter to write an article acceptable to an editor while practicing law full-time ' and that they usually are not paid to write these pieces while they use firm resources to do so. Under these conditions, some lawyers believe it is proper for them to retain the copyright to their articles.
Indeed, for these and other reasons, a number of lawyers and law firms have a policy of never giving up a copyright to an article. Battersby believes that these firms have not 'thought it through.' He wonders whether 'they want to start their own publishing company or are they on a power trip?' He believes that often ego is involved. The lawyers say that 'it has got to be my way because I'm doing this for free,' but the reality, Battersby states, is that 'you're going to these people to get your name out and build up your practice.'
What Is The Solution?
Most lawyers willingly sign the copyright forms submitted to them by publishers. They want their articles to be published, and recognize that so long as they are able to make reprints following publication, and to place their article on their Web site, they have obtained sufficient value from their work. That is almost never a problem for publishers; as Brady says, 'Aspen doesn't want to prohibit an author from making reprints or putting the article on the Web.'
Battersby points out, moreover, that a lawyer who signs a copyright form is merely giving up the expression of the ideas in the article, not the ideas themselves. Thus, the lawyer can write about the same topic, although he or she must use different words. The test, Battersby says, is one of 'substantial similarity.' If the second article is not substantially similar to the published article, it will not violate the publisher's copyright in the published article.
What happens when a publisher cannot persuade a lawyer to sign a copyright transfer? Clearly, publishers can attain their publishing goals with respect to an article by something other than a complete assignment of the copyright. Indeed, Brady concedes that a license written broadly enough can be sufficient for a publisher. She points out that most articles have a relatively short shelf life and that publishers will not be able to do anything with them a year or two after they are published anyway, because they become out-of-date. A license to publish the article, with a representation that it has not been previously published and an agreement not to have it republished for some period of time is all a publisher really needs, Brady believes.
Brady says, however, that negotiating a copyright form or a license may be impossible for some publishers. As a practical matter, a large publisher that publishes many articles over the course of a year simply may be unable to negotiate the terms of a license or copyright transfer. 'A publisher that is going to put articles on the Web may need to have a system in which all authors sign the same form' so the publisher knows that it may use the articles as it wants to do, she notes.
Ultimately, it comes down to priorities. Is it more important (for the publisher and for the lawyer/author) to publish the article in the first place or to get the 'right' form signed by the other side? Both publishers and lawyer/authors need each other, and the copyright concerns ' often times more theoretical than practical ' should not stand in the way of this process.

When a lawyer writes an article for a journal, newspaper, legal newsletter or other kind of collective work, the publisher typically asks the lawyer/author to assign the copyright in the article to the publisher. On occasion, the lawyer, or his or her firm, will insist that the lawyer retain the copyright in the article and instead will offer the publisher only a one-time license to publish the article. If this gap cannot be closed, the publisher will lose an article that would have benefited its readers (and its subscriber base) while the lawyer/author will lose a valuable marketing opportunity to reach potential new clients. Fortunately, when both sides understand the nature of what they are seeking and what they are giving and getting, and when both sides refuse to stand on ceremony, the copyright question should not be a bar to publication.
The Publishers' View
Legal publishers are in the business of selling their products. Toward that end, they generally believe that it is important i) for them to publish articles that have not been previously published by their competitors (a marketing and sales matter); ii) that articles that appear in their publications not be published elsewhere for some period following publication (an 'exclusivity' concern); and iii) that they have the right to use these articles in other media that they have or may develop (a Tasini issue). Therefore, they are likely to ask a lawyer/author to sign a copyright transfer form that 'transfers from [the author] to [the publisher] full ownership of the copyright, and all of the rights comprised therein, in this and all other media, to the [article].'
This kind of form will allow the publisher to publish the article and, because the publisher becomes the owner of the copyright, will bar future publication of the piece by a competitor (at least without the original publisher's consent). Kathleen Brady, a newsletter editor for Aspen Publishers, Inc., in New York City, points out that the form also will allow the publisher to use the article 'however it wants to without having to go back to the author for permission.' That means that the publisher will be able to include the article in the intended print publication and will be able to use it online, in a collection of related articles and as part of a 'best of' publication. The publisher also will be able to use excerpts for promotional purposes. As Brady says, the copyright transfer is important to publishers because 'if someone comes up with an idea about how to make more money with publishing, who wants to go through years and years of forms to see if it is permitted?'
The Lawyers' Position
When a lawyer assigns the copyright in an article to a publisher, the lawyer 'gives up control' of the article, says Greg Battersby, an intellectual property lawyer and partner in the Norwalk, CT office of Grimes & Battersby L.L.P. There is a 'lingering fear in a lawyer's mind that the article will be disseminated where he or she does not want it to be,' he explains.
Although that may be somewhat of an academic problem, a more significant control issue for lawyers is that they want to be able to use their article for certain purposes after it is published. For instance, they want to be able to make reprints of their published article to distribute to clients and prospective clients, place the published article on their firm's Web site, use the published article in educational programs and republish the article elsewhere. They may not be able to do any of this if they have granted the copyright to the publisher; hence, they seek to provide only a license to the publisher while retaining the copyright.
Lawyers recognize the value of article writing as a client development tool and understand that they need publishers to publish their articles to obtain that value ' and to be able thereafter to use it themselves for additional marketing purposes. But they also understand that it is no simple matter to write an article acceptable to an editor while practicing law full-time ' and that they usually are not paid to write these pieces while they use firm resources to do so. Under these conditions, some lawyers believe it is proper for them to retain the copyright to their articles.
Indeed, for these and other reasons, a number of lawyers and law firms have a policy of never giving up a copyright to an article. Battersby believes that these firms have not 'thought it through.' He wonders whether 'they want to start their own publishing company or are they on a power trip?' He believes that often ego is involved. The lawyers say that 'it has got to be my way because I'm doing this for free,' but the reality, Battersby states, is that 'you're going to these people to get your name out and build up your practice.'
What Is The Solution?
Most lawyers willingly sign the copyright forms submitted to them by publishers. They want their articles to be published, and recognize that so long as they are able to make reprints following publication, and to place their article on their Web site, they have obtained sufficient value from their work. That is almost never a problem for publishers; as Brady says, 'Aspen doesn't want to prohibit an author from making reprints or putting the article on the Web.'
Battersby points out, moreover, that a lawyer who signs a copyright form is merely giving up the expression of the ideas in the article, not the ideas themselves. Thus, the lawyer can write about the same topic, although he or she must use different words. The test, Battersby says, is one of 'substantial similarity.' If the second article is not substantially similar to the published article, it will not violate the publisher's copyright in the published article.
What happens when a publisher cannot persuade a lawyer to sign a copyright transfer? Clearly, publishers can attain their publishing goals with respect to an article by something other than a complete assignment of the copyright. Indeed, Brady concedes that a license written broadly enough can be sufficient for a publisher. She points out that most articles have a relatively short shelf life and that publishers will not be able to do anything with them a year or two after they are published anyway, because they become out-of-date. A license to publish the article, with a representation that it has not been previously published and an agreement not to have it republished for some period of time is all a publisher really needs, Brady believes.
Brady says, however, that negotiating a copyright form or a license may be impossible for some publishers. As a practical matter, a large publisher that publishes many articles over the course of a year simply may be unable to negotiate the terms of a license or copyright transfer. 'A publisher that is going to put articles on the Web may need to have a system in which all authors sign the same form' so the publisher knows that it may use the articles as it wants to do, she notes.
Ultimately, it comes down to priorities. Is it more important (for the publisher and for the lawyer/author) to publish the article in the first place or to get the 'right' form signed by the other side? Both publishers and lawyer/authors need each other, and the copyright concerns ' often times more theoretical than practical ' should not stand in the way of this process.