Posted by Victoria Strauss for Writer Beware

One of the effects of the phenomenal growth of ebooks over the past few
years has been to bring new value to the backlist–both for publishers
who hold the contracts for backlist books, and authors who want the
freedom to exploit a new range of rights. Since many of the most
valuable backlist books were published long before ebooks existed, the issue of who controls electronic rights is a pressing one, for authors and publishers alike. Is it the authors, who granted only print rights at a time when print rights were all there were? Or is it the publishers, which bought the exclusive right to publish a book, regardless of the form in which that book appears?

This question may soon be tested in court. Just before Christmas, HarperCollins filed suit against Open Road Integrated Media over Open Road’s 2011 publication, in ebook form, of Jean Craighead George’s Newbery Award-winning children’s book Julie of the Wolves. (The complaint can be found here.)

The claim: copyright infringement. According to Harper, its circa-1970 contract with Ms. George, which gives it the exclusive right to publish “in book form” as well as the right to exploit future technologies “now known or hereafter invented,” implicitly includes a grant of electronic rights–even though those rights did not exist when the contract was signed. Ms. George, therefore, did not have the right to enter into an ebook agreement with Open Road.

This isn’t the first time that disputes over digital rights have arisen from pre-digital contracts. In 2001, a number of Random House authors signed ebook contracts with epublishing startup Rosetta Books, reasoning that, since their contracts pre-dated the existence of ebooks, they could dispose of e-rights as they chose. Random House filed suit, with a claim similar to the one Harper is making now: that the right to publish “in book form” includes not just print, but digital, and Rosetta was therefore committing copyright infringement.

Random’s request for a preliminary injunction was denied by a federal judge, who ruled, on the basis of Random’s own contract language, that “the right ‘to print, publish, and sell the work[s] in book form’…does not include the right to publish in the format that has come to be known as the ‘ebook.'” (An analysis of that decision can be found here.) An appellate court, to which the decision was appealed, agreed. The parties eventually settled, with Rosetta agreeing to pay licensing fees to Random.

Then in 2009, Random decided to try again. It sent a letter to dozens of literary agents, warning them that the company’s older contracts gave it the exclusive right to publish in ebook form, even where the contracts pre-dated the existence of digital formats.

The letter was likely triggered by the ramping up of Random’s efforts to digitize its backlist, but possibly also by the fact that Open Road–which was then, like Rosetta Books before it, a startup–had signed agreements with the estate of Random author William Styron to issue e-versions of some of his print books. As in the Rosetta case, Open Road and Random eventually reached an agreement, with Random dropping its opposition to Open Road’s publication of the Styron works.

There’s no way to know whether the current suit by Harper will go all the way through the courts. Open Road has hired legal representation, and indicated that it intends to fight Harper’s claim. But if the parties don’t wind up settling, the outcome–whichever way it goes–will be a game-changer. As IP attorney Lloyd Jassin puts it,

Depending upon how the case brought by HarperCollins is decided, or resolved, the big six multinational, New York-based, publishers (and their cousin to the north, Harlequin) could either score a copyright and unfair competition protection windfall, or meet their digital Waterloo. Only time will tell.

For analysis of the case, see Jassin’s post–especially interesting because it places Harper’s suit in the context of the entertainment industry’s ongoing effort to argue that old contracts cover new uses–as well as this post from Passive Voice, which examines Harper’s complaint in detail.