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Holly Lisle's Vision

Piracy on the High Bandwidth

by John Savage, Esq.

© 2002, John Savage, Esq.

“John Savage” practices intellectual property and publishing law, complex litigation, and appellate litigation. He maintains an acerbic website at http://savage.authorslawyer.com , and frequently comments on legal issues of interest to writers both on the website and elsewhere. In his mundane identity, he is one of Harlan Ellison’s attorneys in the ongoing internet piracy lawsuit (Ellison v. Robertson et al.).

In the last year or so, several authors I know have suffered the ravages of intellectual property pirates. This article should help writers understand their rights and how to enforce them. We’ll start off with a few examples, then issue some letters of marque and reprisal of our own. 

“Stand by to Be Boarded!” 

One pirate—we’ll call him Captain Bigbluebeard—had acquired years-old submissions to a small-press horror magazine that folded. Bigbluebeard then created a webzine on GeoCities, and posted these stories with full attribution—and an admission on the webzine page that the materials were posted without permission.

Nobody said you had to be bright to be a pirate. And therein lies the rub. Traditional print publishing requires a wad of cash and at least the intelligence of a French poodle for distribution. Electronic publishing requires less—far less. A fourth-grader can master enough of the WYSIWYG hypertext editors available today to turn an electronic file into a web page, and probably has enough savvy to use a free service provider. Distribution then takes care of itself to an extent impossible with paper products.

A second pirate—Captain Brazennads—was moderately more clever, and probably hurt the author’s feelings a lot more than did Captain Bigbluebeard. This author posted a short novel on the Web. The pirate copied the short novel, posted it on his own Web page, and claimed authorship of the novel. The author discovered the pirate by accident. Public pressure resulted in removal from the website and some public embarrassment for the pirate, including expulsion from his otherwise-unrelated writing group.

Then there are the corporate pirates. Speculative fiction very nearly had one recently: Wizards of the Coast. Some time after Wizards acquired TSR, Wizards announced that it would issue a CD-ROM containing all of the editorial material from the first 100 issues of The Dragon, the premier D&D magazine. Most issues contained a short piece of hero-based fantasy fiction.

The CD-ROM itself raised a few eyebrows. What angered writers, though, was that Wizards proposed to distribute this CD-ROM without paying a cent more to the fiction writers, even though the fiction writing contract was not an “all rights” contract. Wizards (and other reissuers of print materials as electronic products) claim that the CD-ROM was not a new publication, but just a reissue and recompilation of The Dragon.[1] If the CD-ROM is not a new publication, no additional payment is due under either the terms of the contract or general copyright and publishing law. (Whether publishers are ethically bound to do so is for another time.) Shortly after an unrelated court decision that rejected Wizards’ theory, Wizards capitulated.[2] But Wizards was not the first, and will not be the last, to make this claim. 

Returning Fire 

Have the Internet and electronic publishing and “reissues” made protecting intellectual property impossible? No. Writers can take several steps to protect themselves from pirates, and instead make the pirates walk the plank.

Insist on a written contract. Writers should, of course, be thrilled when they make their first sales. However, just submitting an item for publication does not give the recipient the right to publish it without the author’s further approval; actual approval is not implicit in the submission. A submission of a story for publication is an offer of merchandise on terms to be negotiated. When the editor accepts the publication, he or she states the terms of acceptance, which must be ratified by the author. The Uniform Commercial Code goes into the details of contract formation and validity in mindnumbing detail. There are lots of exceptions to every rule, and different states interpret these “uniform” provisions slightly differently.

The Copyright Act technically prohibits any transfer of any part of a copyright without a signed, written agreement.[3] As one federal court noted a few years ago:

Common sense tells us that agreements should routinely be put in writing. This simple practice prevents misunderstanding by spelling out the terms of a deal in black and white…[4]

Technically, a publisher needs only a distribution right, not the whole copyright, to publish a story, a novel, or anything else. Unfortunately, the courts have allowed various “industry standards” to determine rights, and have seldom provided a definition. For example, the phrase “First North American Serial Rights” is not defined in the Copyright Act, or anywhere else that has the force of law. (Even “published” was not defined until the 1990s!) At the very least, follow the sale of a story up with a letter that states what distribution rights the publisher is allowed.

Writers should demand written contracts even when the editor is a close friend and requested the story. If the editor keels over, someone else may have to handle the editor’s assets—which certainly include literary properties. Bankruptcy can make things even more convoluted. If a publisher declares bankruptcy, the trustee will auction off every asset to the highest bidder.[5]

Do not transfer all rights. In his column in Speculations, Mike Resnick says that professional writers reject quarter-cent-a-word sales. I suggest that professional writers reject all-rights sales. Simple enough? The Wizards of the Coast controversy shows exactly why. The only people who will get payment from Wizards for the CD-ROM publication are the fiction writers, because TSR imposed an “all submissions become the property of TSR” clause on everyone else.

There are two exceptions—and only two exceptions—to this rule. The first is media fiction. Media fiction, whether derived from games, movies, TV shows, or whatever, is not independently conceived for copyright purposes, no matter how much effort and originality the writer puts into his or her work. Media fiction is a derivative work, and the creator of the media property has the master copyright (although the writer has a second, subordinate copyright in the exact derivative work). For all practical purposes, the media fiction writer never had “all rights.” The second exception is the publisher’s offer of so much money for all rights that the writer will never have to work again—at least mid-six figures up front, with a continuing royalty and an equitable split of derivative rights sales.

Some publishers ask for more rights, claiming that they need the extra rights to help cover their own risks in publication. This is a barrel of weevil-ridden hardtack, even for the small press. Accounting rules do not allow a publisher to project future rights sales, or rely on those speculative sales for income; anything the publisher makes on additional rights sales is pure profit. It may be reasonable for a writer to split this profit with the publisher if the writer is unable to exploit these additional rights, although this is the exception. Anything more is, well, piracy.

Keep an eye out for the skull and crossbones. The two incidents described at the beginning of this article came at the authors out of the fog. In both incidents, someone came across the website itself and found the infringements. Web searches can be a more powerful, more certain, and more efficient tool than relying upon the denizens of the Rumor Mill (http://www.speculations.com/rumormill), although we’re a rough and ready crew, ready to board and scuttle any Internet pirate’s ship. Free web search software, such as WebFerret and Copernic (both for Windows), does an excellent job finding specific phrases. Once every three months, or more often if possible, search for your titles, for unique phrases and character names, and for your own name.

Of course, if you see what you believe to be an infringement of someone else’s copyright, let the author know. Don’t take action yourself without facts. Groundless accusations of copyright infringement can result in the accuser paying the wrongly accused party’s legal fees,[6] which could well be far higher than a mid-list writer would earn over the life of a novel.

Attack the pirates below the waterline. While it is often polite to write a letter or message demanding that the pirate stop the infringement, such a shot across the bow seldom suffices. The next step is complaining to someone with authority over the infringer’s Internet account.

Some service providers, such as GeoCities, claim that they will not take action for copyright infringement unless the holder sends a copy of the copyright registration to GeoCities. Don’t believe it. What these providers really mean is that they will not intervene in cases of disputed copyright ownership, such as Captain Brazennads’ style of piracy. If there is no question of copyright ownership, as with Captain Bigbluebeard, the service provider will often sink the pirate when writers either send a demand letter by fax or mail, or have an attorney contact the service provider. This may be as simple as removing the infringing document itself. The service provider will directly contact the alleged infringer, even if the provider claims that “The complaint is being processed for further consideration; don’t call us, we’ll call you,” or other such nonsense.

A letter to a service provider might read something like this:

 

1313 Mockingbird Lane
Hollywood, California 96969
(415) 555-1212
 

Billy Joe Bob’s Feed Store and Internet Hookups
47 Technology Parkway
East Podunk, Nebraska 76543

Dear Sir or Madam:

A webpage hosted by your service (http://www.billyjoebob.com/[SpecificPageReference], retrieved [date and time]) is infringing upon my copyright in [description of work, including title, type of work, and year of creation]. I have attempted to resolve this directly with the account holder without satisfaction. Please take appropriate action against [infringer] by at least removing the referenced page from your service.

Pursuant to 17 U.S.C. § 512, this letter serves as actual notice of infringement in the event of any legal proceedings. The information in this notification is accurate, and under penalty of perjury, I state that that I am the owner of an exclusive right that the specified page infringes. 

Signed,

Arthur Author

The last paragraph of the sample letter both reminds the service provider of its obligations and fulfills the requirements of the Digital Millenium Copyright Act. A webpage provider has control over the continuing contents of its pages, and the terms of service usually state that the provider will exercise that control. A court will not find copyright infringement unless the plaintiff proves that the infringer knew of the violation. The explicit notice of the violation notifies the provider of the infringement and makes it liable—except if the provider takes steps to control or remove the violation.[7] This is especially effective against Captain Bigbluebeard’s provider, since Captain Bigbluebeard cannot contest the writer’s copyright. It may be helpful against Captain Brazennad’s provider, but it is less likely.

But to whom does one send the letter? One of the new requirements of the Digital Millenium Copyright Act is that all service providers must provide the name, address, and contact information for its representative who handles allegations of copyright infringement. The Register of Copyright is the definitive source for this information, which is posted online  (http://www.loc.gov/copyright/onlinesp/) (requires Acrobat Reader, and is not appropriate for PDA use). NSI (http://www.nsi.com) also keeps a listing, but this listing often does not extend to vanity domains, and is of suspect timeliness.

Neither does the letter have to go through the mail, thereby taking a week or more. A faxed transmission is acceptable, and electronic mail that includes a digital signature is also acceptable. The key is to include all of the information. If Aunt Claudia, who has never used a computer before in her life, could find the infringement with the information provided in the letter, the letter is clear enough.

Follow the rules yourself. This is as much a matter of ethics as a matter of law. Writers should be scrupulous in the way they treat other writers’ work. While “he did it, too” is not a defense to infringement, it is a mitigating circumstance that will reduce the damages awarded. What goes around, comes around: If Writer A does not treat Writer B’s intellectual property as worth very much, Infringer’s attorney will present evidence of that to reduce Writer A’s damages at trial.  

Conclusion 

Writers are not powerless against Internet pirates. Understanding (and finding) the problem is the first step; reacting appropriately is the second. Simple precautions with your work and standing up for yourself will steady your ship. You should seek a copyright attorney’s assistance for anything that goes beyond this article.



[1] Tasini v. New York Times, ____ U.S. ____ (2001) thoroughly refuted this theory. For procedural reasons, I don’t expect a complete resolution before 2004.

[2] See Mayhew v. Allsup, 166 F.3d 821 (6th Cir. 1999) (discussing the definition of “publication”).

[3] 17 U.S.C. § 204(a).

[4] Effects Assocs. v. Cohen, 908 F.2d 555, 556 (9th Cir. 1990).

[5] Some contracts purport to automatically revert rights to the author if the publisher enters bankruptcy. Such a clause is meaningless; the Bankruptcy Code strikes out those clauses. See 11 U.S.C. §§ 523, 562. The bankruptcy trustee’s decision to allow the rights to revert is discretionary, and not controlled by the contract language.

[6] Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994).

[7] See Sony Corp. of America v. Universal City Studios, 464 U.S. 417, 435–46 (1981) and 17 U.S.C. § 512.

© 2000 by John Savage

This article originally appeared in Speculations 31 (February 2000) and has been since reprinted. It has been edited for currency and republication. All exclusivity periods expired not later than April 2001.