Author's Rights Grant to Publisher Included e-Books

In the Second Circuit, within which the Southern District of New York resides, several appellate decisions involving the film industry found that future technology uses reasonably rose from the media covered by the original licenses. See, e.g., Boosey & Hawkes Music Publishers Ltd. v. The Walt Disney Co., 145 F.3d 481 (2d Cir. 1998). (In the Ninth Circuit, which includes Silicon Valley and Hollywood, licensing agreements have been found to exclude new technology uses not specifically granted in the contract. See , e.g. , Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1998).)

Granting summary judgment for HarperCollins against Open Road, District Judge Naomi Reice Buchwald observed: “The applicable Second Circuit precedent cautions courts not to limit new uses to those that 'fall within the unambiguous core meaning of the term' provided by the contract. ' Rather, the e-book format constitutes a permissible extension of 'book form' via 'storage and retrieval and information systems, and/or whether through computer, computer-stored, mechanical or other electronic means' just as the television broadcast of a movie and the videocassette constituted a lawful extension of the motion picture form.”

District Judge Buchwald then concluded that George's 1971 rights grant to Harper & Row was even more expansive than those examined in the Second Circuit's new-use decisions. “By specifically providing for anticipated electronic means that might be 'hereafter invented,'” Judge Buchwald wrote, “the 1971 contract's grant language becomes greater in breadth, at least with respect to new uses, than the analogous contracts in Second Circuit new use precedent.”

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.

Today's book publishing agreements typically include a grant of e-book rights from an author to a publisher. But contracts from the pre-e-book era have been contested as to whether the older agreements give the author or the publisher the e-book rights in the author's works. The U.S. District Court for the Southern District of New York has decided that the phrase “now known or hereafter invented” granted the e-book rights to the publisher. HarperCollins Publishers LLC v. Open Road Integrated Media LLP, 11 Civ. 9499.

Author Jean George signed a contract with Harper & Row in 1971 under which her popular children's book Julie of the Wolves was published. George's literary agent Curtis Brown negotiated for the following clause to be included in the final agreement: “Publisher shall grant no license without the prior written consent of the Author with respect to the following rights in the work: use thereof in storage and retrieval and information systems, and/or whether through computer, computer-stored, mechanical or other electronic means now known or hereafter invented.” A “Reserved Rights” clause stated George retained “[a]ll rights in the Work now existing, or which may hereafter come into existence, not specifically herein granted.”

In 201l, after HarperCollins refused to match a 50% royalty split that Open Road offered George to publish Julie of the Wolves as an e-book, George signed with Open Road. HarperCollins filed a copyright infringement complaint, following publication of Open Road's e-edition.

In the Second Circuit, within which the Southern District of New York resides, several appellate decisions involving the film industry found that future technology uses reasonably rose from the media covered by the original licenses. See, e.g., Boosey & Hawkes Music Publishers Ltd. v. The Walt Disney Co., 145 F.3d 481 (2d Cir. 1998). (In the Ninth Circuit, which includes Silicon Valley and Hollywood, licensing agreements have been found to exclude new technology uses not specifically granted in the contract. See , e.g. , Cohen v. Paramount Pictures Corp., 845 F.2d 851 (9th Cir. 1998).)

Granting summary judgment for HarperCollins against Open Road, District Judge Naomi Reice Buchwald observed: “The applicable Second Circuit precedent cautions courts not to limit new uses to those that 'fall within the unambiguous core meaning of the term' provided by the contract. ' Rather, the e-book format constitutes a permissible extension of 'book form' via 'storage and retrieval and information systems, and/or whether through computer, computer-stored, mechanical or other electronic means' just as the television broadcast of a movie and the videocassette constituted a lawful extension of the motion picture form.”

District Judge Buchwald then concluded that George's 1971 rights grant to Harper & Row was even more expansive than those examined in the Second Circuit's new-use decisions. “By specifically providing for anticipated electronic means that might be 'hereafter invented,'” Judge Buchwald wrote, “the 1971 contract's grant language becomes greater in breadth, at least with respect to new uses, than the analogous contracts in Second Circuit new use precedent.”

Stan Soocher is Editor-in-Chief of Entertainment Law & Finance and a tenured Associate Professor of Music & Entertainment Industry Studies at the University of Colorado's Denver Campus. He can be reached at [email protected] or via www.stansoocher.com.