Brits Demand Pirate Bay Blockade - Interview With Entertainment Attorney John J. Tormey III, Esq.

BRITS DEMAND PIRATE BAY BLOCKADE -

INTERVIEW WITH ENTERTAINMENT ATTORNEY JOHN J. TORMEY III, ESQ.

Brits Demand Pirate BayBlockade
By Rachelle Dragani
E-Commerce Times
11/07/11 11:02 AM PT
http://www.ecommercetimes.com/story/73695.html

British lobby group BPI wants one of the UK's largest Internet service providers, BT, to ban its customers from accessing file-sharing website The Pirate Bay. The site's been blocked in a handful of countries before, yet it lives on as one of the Web's most popular destinations for those looking to share copyrighted material online.

http://n4g.com/news/883338/brits-demand-pirate-bay-blockade

A coalition of film studios, record labels and media entities led by the UKrecord industry lobby group BPI recently sent a letter to British Internet service provider (ISP) BT demanding that the company block access to The Pirate Bay website.

http://current.com/technology/93533031_brits-demand-pirate-bay-blockade.htm

The group said that if BT doesn't act within two weeks, the matter will proceed to court. BPI is banking on the recent UK court decision regarding Newzbin2, a British file-sharing website recently blocked by court order.

http://www.corkboard.it/posting/show/21302-brits-demand-pirate-bay-blockade

It was the first British website to be blocked for reasons besides carrying offensive material such as child abuse images, and BPI is hoping to capitalize on that decision and get the courts to again demand blocking The Pirate Bay, which provides visitors with files that can be used to share media and data online, including copyrighted works.

http://digg.com/news/entertainment/technology_news_piracy_brits_demand_pirate_bay_blockade

It's not the first time The Pirate Bay has faced such demands since its start eight years ago by a Swedish anti-copyright organization. Lawsuits and raids have led to brief downtimes for the website, as well as restrictions, fines and prison sentences for its creators. The site is blocked in Denmark, Finland, and Italy.

http://www.startaid.com/review/19279486/Brits-Demand-Pirate-Bay-Blockade.html

BT indicated to The Guardian that it would await a court order before blocking any Web content. The Pirate Bay, BPI and BP did not respond to the E-Commerce Times' requests for further comment.

http://sitemarks.in/technology/brits-demand-pirate-bay-blockade/

Copyright Battles

"The effects of illegal downloading and piracy have certainly trickled down to the ranks of the artists and creative community", New York entertainment lawyer John J. Tormey III told the E-Commerce Times. The music industry has been transformed, the TV industry has been transformed, the book publishing industry has been transformed, and the film industry has been transformed."

http://current.com/technology/93533031_brits-demand-pirate-bay-blockade.htm

The producers of copyrighted media whose works are freely traded online have for years said their businesses are directly hurt by piracy. However, as industries start to blend together -- for example, a computer company like Apple could make deals to become a content provider -- there are many more organizations with interests in protecting copyrights.

"If the courts don't support the business of copyright, then we're pulling the rug out from under the ones who are doing it to survive, and it dis-incentivizes creation. From a global perspective, it really puts you in a less competitive place", said Tormey.

http://jtormey.newsvine.com/_news/2011/11/09/8727325-brits-demand-pirate-bay-blockade

No Going Back

Illegal downloads, illicit BitTorrent activity, unauthorized streams and other pirating methods have become so rampant it may be practically impossible for the film, music and television industries to eliminate the phenomenon entirely. If the BPI can get The Pirate Bay blocked, as it has been in other countries, there will likely still be other sites and methods for freely obtaining and sharing copyrighted material.

Since the legal system has to straddle the line between protecting freedom of speech and protecting enterprise, coupled with a technological scene that's advancing quickly, legislation has had a difficult time keeping up.

In order for copyrights to maintain their importance, then, outdated legislation might not be the answer, though it's possible for protections to catch up to technology.
http://bx.businessweek.com/entertainment-industry/e-commerce-news-piracy-brits-demand-pirate-bay-blockade/13322907556411127837-611313eb4c2aa3e6d86d6786d8713c62/

"Carriers are essentially saying they can't control what goes through the door, but the technology exists. The U.S. government has the ability to pick up on certain key words as a weapon against terrorism, so the intelligent powers know that a macro can be set up to pick up material that is harmful - so the technology exists of common carriers to pick up certain file-sharing or illegal activity", said Tormey.

Some record labels or pro-copyright groups also focus on education campaigns to counter the inability of legislation to accomplish widespread bans on illegal file-sharing.

"I'm not sure if legislation can fix the system, but I think education can", [another commentator] told the E-Commerce Times. "We have to do a better job of educating everyone about the importance of copyright because the kind of legislation we see coming out ends up being clumsy and overreaching, putting us in a situation where we end up clamping down on free speech instead of keeping the lines open".

http://blog.mmoga.com/2011/11/brits-demand-pirate-bay-blockade/

evolver.fm Interview With John J. Tormey III, Esq., New York Music Lawyer: Reversions Of Masters, Terminations Of Transfers, And Derivative Works Under The United States Copyright Act

EVOLVER.FM INTERVIEW WITH JOHN J. TORMEY III, ESQ., NEW YORKMUSIC LAWYER: REVERSIONS OF MASTERS, TERMINATIONS OF TRANSFERS, AND DERIVATIVE WORKS UNDER THE UNITED STATES COPYRIGHT ACT
http://evolver.fm/2012/02/29/why-mastered-for-itunes-wont-defuse-a-copyright-time-bomb/
http://www.evolver.fm/

Interview by Eliot Van Buskirk

Why ‘Mastered For iTunes’ Won’t Defuse A Copyright Time-Bomb

Next year, in 2013, a time-bomb embedded in the Copyright Act of 1976 starts to detonate, as valuable copyrights fall back into the hands of artists who decide that they would prefer to own their songs, rather than allowing their label and publisher to keep selling them.

Recordings released in 1978 will be up for copyright termination in 2013, even if artists legally sold those songs away decades ago. Recordings from 1979 fall into this category in 2014, and so on, over the years.

These are valuable copyrights, useful for licensing in movies, advertisements, and videogames in addition to being sold in iTunes and elsewhere.  Wouldn’t it be convenient if the labels could devise a way to hang on to those sound recordings? After all, everyone from the guy behind “Funkytown” (listen above) to The Eagles is lawyering up to take back songs sold to labels and publishers.

Indeed, Mitch Glazer, later hired as a lobbyist for the RIAA, gave the labels some grounds to keep these copyrights by adding a provision to the Copyright Act in 1999 that attempts to categorize sound recordings as “works for hire” made by musicians as employees of the labels. The U.S. Registrar of Copyrights objected strongly to the addition because it changed the law, rather than correcting an oversight. (Update: The provision was repealed [thanks, Eriq Gardner], although sources we’ve spoken with say the “works for hire” issue is still at play today). Our courts — possibly the Supreme Court — will likely have to untangle the whole mess after artists start trying to get their songs back next year, with notices already being filed.

One magical option for the labels would be to create a new sound recording copyright for these songs — say, by remastering them for iTunes. It did seem a bit odd that Apple, after listening to audiophiles complain for nearly nine years about the sound quality of songs sold in iTunes, would unveil its “Mastered for iTunes” program the very year before these old copyrights started reverting. Could the labels’ ace in the hole be a plan to sell newly-copyrighted remasters while allowing the old and busted ones to revert?

After hearing from multiple lawyers and other sources (some who would not comment on the record), we’re convinced that Mastered for iTunes cannot allow record labels to defuse this copyright time bomb — even though movie studios have been granted new copyrights for colorizing black-and-white movies. As it turns out, the difference between the regular version of the song and the “remastered for iTunes” version is too small, from a legal perspective, to justify a new copyright (and with it another 35 years of label control). For a new copyright, a band would have to go farther than that — say, by recording a new version.

[One source] summed things up by phone, putting our mind at ease that “Remastered for iTunes” cannot be a copyright land-grab disguised as an improvement in compressed sound quality. Casey Rae-Hunter, deputy director of the Future of Music Coalition agreed, saying that there’s not enough change in expression between the original and the remaster. (Apple and all four major labels declined to respond.) Then we heard back from New Yorkentertainment lawyer John Tormey III, Esq. (email) with a remarkably in-depth explanation of why Remastered for iTunes won’t stop copyrights from reverting to artists starting next year.

If you’re interested in the intricacies of this situation, buckle up:

[Said John J. Tormey III], "First of all, none of my comments are intended to speak to Apple’s specific situation, or the specific situation of Apple adversaries if any.

Second, the two parts to your question may be apples-to-oranges, to some degree. Though there will always be exceptions, those in your hypothetical question taking action to retrieve “revert[ed]” music-related copyrights under the Termination Of Transfer provisions of the U.S. Copyright Act – See 17 United States Code (U.S.C.) § 203

http://www.law.cornell.edu/uscode/text/17/203

and 17 U.S.C. § 304

http://www.law.cornell.edu/uscode/text/17/304

– would more typically be songwriters or their families seeking a “return home” of rights in the old songs (compositions), rather than in their corresponding masters (sound recordings). Those are two different rights, albeit corresponding to the same album material perhaps. In fact, the United States Copyright Office (USCO) has two different forms for these two different rights – USCO “Form PA” corresponds to songs (compositions):

http://www.copyright.gov/forms/formpa.pdf

whereas USCO “Form SR” corresponds to masters (sound recordings):

http://www.copyright.gov/forms/formsr.pdf

 

Traditionally in pop music record-deal history, songs have been exploited by and through publishing companies and performance rights societies:

http://www.ascap.com/

http://www.bmi.com/

http://www.sesac.com/

as agreed and permitted by the original songwriter (generally speaking and to simplify, “publishing”) – whereas rights to the masters traditionally originated with, and often stayed with, the record labels. So, the songwriter/musician signed to a traditional record deal may have retained his/her “publishing” and even received a per-unit record royalty (or been stiffed out of one, perhaps), but that doesn’t mean that the songwriter/musician ever had ownership in the master (sound recording).

But for the sake of your hypothetical, let’s assume that a songwriter/musician somehow originally held both sets of rights (1. Songs, 2. Masters) in the same initially-self-produced album. And now, there’s a later-occurring transferee or licensee, like an Internet distribution company, trying to stave off the songwriter/musician’s family’s pursuit of revert[ed] (or as I sometimes colloquially say, “recaptured”) rights under the Termination Of Transfer provisions of § 203:

http://www.law.cornell.edu/uscode/text/17/203

or § 304:

http://www.law.cornell.edu/uscode/text/17/304

 

Sure, your hypothetical Internet company can try to claim a “new copyright” in a newly-reworked master:

http://www.copyright.gov/circs/circ14.pdf

and can even try to file a new (or additional) Form SR with the United States Copyright Office (USCO) corresponding to it, but: (A) the USCO, federal courts, and jury might still disregard the Internet company’s claim and filing post facto, and adjudicate to same effect when the claimed “new” right is administratively-tested and/or forensically-tested; (B) the Internet company may be making the “new” claim and filing for “bluff” purposes alone and full well know how flimsy their theory is under their own fact-pattern, never having any intention to go to court or even to the USCO with the “new copyright” theory; and (C) the analysis could be affected by whether the copyright in and to the original, underlying sound recording has already fallen into the public domain (PD):

http://www.copyright.gov/help/faq/faq-definitions.html

at time of the remastering. If a party in the old chain-of-title for the original master failed to timely file a renewal when the statute required, for example, the copyright in the underlying original work could already be PD, and a new claim and filing won’t bring it back from the dead.

“Derivative work” is a term of art under the Copyright Act. Under the Copyright Act, a “derivative work” is defined as a work based upon one or more pre[-]existing works… such as a new musical arrangement – or, yes, a “transformed” “sound recording” – your very case. See 17 U.S.C. § 101:

http://www.law.cornell.edu/uscode/text/17/101

 

Depending upon factual circumstances, one could argue that a remaster based upon an original master, is a derivative work of the original master, yet I think that would pre-suppose audibly-detectible differences between the first and second master such that USCO, judge, and jury wouldn’t otherwise simply hear the two as identically the same. Jurors, particularly, aren’t always musicians.

Let’s assume, though, that your hypothetical new master is significantly audibly-distinct from, and even improved with respect to, the first master. Still, as stated by the Second Circuit, a derivative (work) copyright is a good copyright only with regards to the original embellishments and additions made [to] the underlying work. See, e.g., Harvey Cartoons v. Columbia Pictures, 645 F. Supp. 1564, 1570 (SDNY, 1986):

http://www.leagle.com/xmlResult.aspx?page=4&xmldoc=19862209645FSupp1564_11974.xml&docbase=CSLWAR2-1986-2006&SizeDisp=7

 

Copyright in a derivative… work merely protects against copying or otherwise infringing… the original contribution contained in the derivative work. HarveyCartoons v. ColumbiaPictures, 645 F. Supp. 1564 (SDNY, 1986):

http://www.leagle.com/xmlResult.aspx?page=4&xmldoc=19862209645FSupp1564_11974.xml&docbase=CSLWAR2-1986-2006&SizeDisp=7

See also Rohauer v. Killiam, 551 F.2d 484 (2nd Cir. 1977).

http://federal-circuits.vlex.com/vid/rohauer-killiam-shows-36847796

 

So, yes, the Internet company could try to claim a “new” copyright in the new master. But that claim is limited to the incrementally-added material, at best:

http://www.law.cornell.edu/uscode/text/17/103

 

And that “new” claim shouldn’t extend the old copyright term in the underlying master – else the limitations on the term of copyright under 17 U.S.C. § 302 would be rendered meaningless thereby:

http://www.law.cornell.edu/uscode/text/17/302

 

Imagine record labels re-registering new masters every few years, on into perpetuity perhaps, subverting the purpose and intent of the Copyright Act – which instead only intends to confer a limited but not perpetual lawful monopoly to rights-holders.

Rather, the best that the Internet company in your hypothetical can hope for, when claiming and registering a copyright in the new master, is to seek protection in the new additions made to the old work. That being said, if a USCO Examiner, federal judge, and/or jury can’t actually hear the changes between the old and new work, then the claimant is going to have a difficult if not impossible time as a practical matter alone, using federal law and the judicial process to enforce those “new” claimed rights. Also, if the original underlying sound recording has already fallen into the public domain, the claimant will likely not evoke much judicial sympathy under the hot lights of litigation, to say the least, as the claimant’s new action will look more like a ruse trying to resuscitate dead rights than anything else. In other words, under most scenarios, there won’t likely be much substance to the remasterer’s “new claim”.

As for whether or not the claimant could try to use the new claim or filing for the re-master as a shield against songwriter descendants proceeding under the Copyright Act’s Termination Of Transfer provisions (17 U.S.C. § 203, and 17 U.S.C. § 304):

http://www.law.cornell.edu/uscode/text/17/203

http://www.law.cornell.edu/uscode/text/17/304

 

I doubt that that approach would be effective under most circumstances, except maybe as a bluff perhaps. The statute and legislative intent are clear that the party acting pursuant to the Termination Of Transfer provisions of the Copyright Act, should be entitled to recapture (or as the statute says, “rever[sion]“) of the original rights as the statute provides. Most “recapturing” parties in your hypothetical would likely be pursuing recaptured rights to compositions rather than sound recordings. The majority of such Termination Of Transfer scenarios in music will be songwriter-families recapturing rights to songs and not masters. Their songwriter forebears often never maintained rights in the masters to begin with".

There you have it.

Copyright Registration Is Not A Pre-Condition To Protection: Written By New York Entertainment Attorney And Copyright Lawyer John J. Tormey III, Esq.

http://www.tormey.org/copyright.htm

Law Office of John J. Tormey III, Esq. – Entertainment Lawyer, Entertainment Attorney

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY  10128  USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

brightline@att.net

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Copyright Registration Is Not A Pre-Condition To Protection: Written By New York Entertainment Attorney And Copyright Lawyer John J. Tormey III, Esq.

© John J. Tormey III, PLLC. All Rights Reserved.

This article is not intended to, and does not constitute, legal advice with respect to your particular situation and fact pattern. Do secure counsel promptly, if you see any legal issue looming on the horizon which may affect your career or your rights. What applies in one context, may not apply to the next one. Make sure that you seek individualized legal advice as to any important matter pertaining to your career or your rights generally.

Contrary to the near-indefatigable lay assumption that entertainment attorneys like myself hear all the time, one is not required to register a copyright in one’s work with the U.S. Copyright Office (USCO) at the Library of Congress in Washington, D.C. (or elsewhere) as a condition precedent for U.S. copyright protection. In other words, the New York-based author in Chelsea, for example, already has copyright protection in his or her finished original work of authorship, under U.S. federal law, just as soon as the work is reduced to a tangible medium of expression in New York. That copyright protection is automatic, and inheres in the Chelsea-situate New York author immediately, his or her entertainment lawyer will opine.

Therefore, when the New York entertainment attorney hears the Chelsea-based New York writer saying “I ‘copyrighted’ my novel by registering it with the Library of Congress and the Copyright Office in Washington , D.C.”, the writer is usually operating under a mistaken set of geographic and legal assumptions. It is incumbent upon entertainment lawyers to correct those assumptions. This one is a particularly difficult myth to explode - because members of Congress, those that write and edit case law, and a few jurisprudential scholars have been known to use “copyrighted” as a verb form, too. When I hear it, it sounds to me like nails on a chalkboard.

So, “No”, the New York entertainment attorney replies to the New York writer in Chelsea, “you already had automatic copyright protection in your work as soon as you wrote down the text - as soon as you reduced your vision to a ‘tangible medium of expression’. Your act of mailing it from a post office on Manhattan’s West Side in New York City, to Washington D.C., isn’t what engendered the copyright. Rather, your prior act of crystallizing it in a tangible medium here in downtown West Side New York – pen to paper, or keystroke to hard-drive – is what caused the copyright in your work to be born. The New York entertainment attorney then explains that the phrases and verb forms “to copyright” or “I copyrighted” should probably be avoided outright – certainly avoided as synonyms for “registration” or “filing” - specifically to prevent that kind of lay confusion. After all, if the Chelsea screenwriter in New York “copyrighted”[sic] his or her work only by mailing it to Washington D.C. on Friday morning, then that would imply that no copyright yet existed in the work when he or she completed the final draft, hit the “Save” button on his keyboard, and printed it out in hard-copy form in his or her Chelsea home office in Manhattan on the Thursday evening prior – and that conclusion would be legally incorrect. In that fact pattern, the entertainment lawyer opines, the copyright existed and the screenwriter owned it as of Thursday evening based upon the events that happened in downtown West Side New York.

The process of U.S. copyright registration is just an after-occurring formality, though it is one which entertainment attorneys (from New York, and yes, even elsewhere in places like Hollywood) handle for their clients often. In other words, the work is already copyright-protected prior to one’s mailed submission of the work from New York or any other city, to the U.S. Copyright Office and Library of Congress in Washington, D.C. Yes, U.S. copyright registration does thereafter provide certain advantages over unregistered works, as your entertainment lawyer will tell you. But copyright registration is not itself a pre-requisite for copyright protection. The copyright protection exists first. The copyright filing comes second.

After all, the USCO form specifically asks the filer when – in what year - his or her work was completed. You could in theory file in 2011 for a 2006-completed work. In that case, the copyright would have existed as of 2006.

Under the U.S. Copyright Act, (which can be found at various locations on the Internet, at 17 United States Code [U.S.C.] Section 101 and following)

http://www.law.cornell.edu/uscode/html/uscode17/usc_sup_01_17.html

the author of an original and otherwise-protectable work automatically possesses a copyright in that work as soon as the work is reduced to a “tangible medium of expression”. No later.

http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000102----000-.html

The New York choreographer on Manhattan’s West Side improvises a new set of dance steps for her students - fleeting, in the air - but owns no copyright in these movements or their performance or rendition. However, the moment she writes down the original dance steps using a detailed graphic chart, or videotapes herself performing them in her New York studio – perhaps at her entertainment lawyer’s suggestion - she may then have a chance to claim some copyright-protected work. The key, again, is the work’s reduction to a fixed medium.

http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000102----000-.html

In fact, she may own the copyright in that material without ever interacting with Washington, D.C. – even though her entertainment attorney will tell her that it sure would be a good idea to thereafter mail a filing to D.C. if the original work of authorship is perceived to have any economic or other long-term value.

And this makes sense. Look at it from the perspective of copyright enforcement – from the perspective of the New York entertainment attorney litigator trying to prove or disprove copyright infringement in a court of law downtown at 500 Pearl Street. How difficult would the job be of a federal judge or jury in a U.S. copyright infringement litigation in the Southern or Eastern Districts of New York, or that of a U.S. Copyright Office Examiner in Washington, D.C., if the U.S. Congress allowed all of us to claim copyright in the inchoate and evanescent? The courts in New York and indeed nationwide would be inundated with strike suits and other spurious copyright claims, perhaps more often brought by pro se litigants rather than their entertainment lawyers if any. Therefore, Congress doesn’t let us get away with it. Congress requires reduction to a “tangible medium of expression” as a pre-condition for copyright protection. But no, Congress does not require copyright registration as a pre-condition to copyright ownership itself - rather, copyright registration at or around the time of creation is discretionary with the copyright owner. Congress only requires copyright registration as a pre-condition to filing a lawsuit for copyright infringement – something that your entertainment lawyer litigator won’t miss when reviewing the statute pre-filing of the federal court lawsuit:

http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000411----000-.html

Yes, your entertainment attorney will tell you that after-occurring copyright registration of a work does provide certain strategic advantages, relative to unregistered works. Copyright registration notifies those of us in New York, and in California, the U.S., and the rest of the world, at least constructively, that the copyright claimant thinks he or she owns the copyright in that registered work. Practically speaking, copyright registration creates a likelihood that another company including its own entertainment attorney performing a copyright search, will “pick up” (i.e., see, or notice) the previously-registered work, when that company or its entertainment lawyer counsel later conduct a thorough professional (or for that matter even a cursory and informal) ocular copyright search of the public records of the Washington, D.C.-based U.S. Copyright Office.

http://www.copyright.gov/records/

Most film studios and their entertainment attorneys perform thorough copyright searches as a matter of course, for example, before optioning an author’s literary work.

As discussed above, whether you live in New York, Los Angeles, or elsewhere, copyright registration with the U.S. Copyright Office in the Library of Congress in Washington D.C. is also a necessary precursor to your entertainment attorney litigator bringing a copyright infringement litigation in a U.S. federal court. For this reason, in practice, individuals and companies and their entertainment lawyers have been occasionally known to register their copyrights days - or even hours, paying an emergency rush filing fee using a New York-to-D.C. Fed Ex - before they sue for copyright infringement in federal court. Of course, the entertainment lawyer will tell you that it is better to register the work at an earlier stage than that. Filing a copyright infringement litigation predicated upon a USCO copyright registration in turn allows for the entertainment attorney litigator to recover certain types of damages afforded by the U.S. Copyright Act, such as “statutory” damages, and plaintiffs’ attorneys fees. These types of damages would not be availing to the copyright plaintiff if his or her entertainment lawyer sued using a different common law theory. A copyright registration may also work advantages in terms of certain international copyright protections.

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http://www.tormey.org/art.htm

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My practice as a New York entertainment attorney includes copyright registration work in music, film, television, publishing, Internet, media, and all artistic fields. If you have questions about legal issues which affect your career, and require representation, please contact me:

Law Office of John J. Tormey III, Esq.

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY  10128  USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

brightline@att.net

http://www.tormey.org/

 

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Publishing and Digital and Electronic Rights - Part II: Written By New York Entertainment Attorney And Publishing Lawyer John J. Tormey III, Esq.

http://www.tormey.org/publishing2.htm

Law Office of John J. Tormey III, Esq. – Entertainment Lawyer, Entertainment Attorney

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY  10128  USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

brightline@att.net

http://www.tormey.org/

Publishing and Digital and Electronic Rights - Part II: Written By New York Entertainment Attorney And Publishing Lawyer John J. Tormey III, Esq.

© John J. Tormey III, PLLC. All Rights Reserved.

This article is not intended to, and does not constitute, legal advice with respect to your particular situation and fact pattern. Do secure counsel promptly, if you see any legal issue looming on the horizon which may affect your career or your rights. What applies in one context, may not apply to the next one. Make sure that you seek individualized legal advice as to any important matter pertaining to your career or your rights generally.

Part I of this article discussed how phrases like the “digital right” or “electronic right” should not be assumed to be self-defining, even by and between publishing lawyers and entertainment attorneys, and how it is incumbent upon authors to reserve needed rights like the digital right or the electronic right to themselves in the context of a publishing deal. Next up, this Part II examines concepts such as the digital right or electronic right from the perspective of the publishing lawyer and entertainment attorney, and the standpoint of fairness - who between author and publisher should in fact hold on to the digital right and electronic right, once and assuming that they are first properly defined?

3. Yes, Digital Right And Electronic Right Uses Do Compete With Traditional Book Publishing Uses.

A publishing lawyer or entertainment attorney may be called upon to handle an author-side deal. A publishing lawyer or entertainment attorney may also be called upon to handle, under different factual circumstances, a publisher-side deal. So, now, a few words in defense of publishers, I suppose.

There is a perception in the author and Internet communities that publishers should not be taking broad grants of the digital right or electronic right from authors, since “digital rights and electronic rights do not compete or interfere with traditional book publishing and other media rights”.

Not true. Not anymore. For proof of that fact, ask a few veteran news desk editors whether or not they followed, or were otherwise concerned about, what appeared on the Drudge Report during the Clinton administration. Ask the CFO’s or in-house publishing lawyers of a few traditional encyclopedia companies how they feel about Wikipedia.

Incidentally, although as a publishing lawyer and entertainment attorney and unlike some others, I tend to use the phrase “electronic right” or even “digital right” in the singular number, there probably tends to be no single consensus as to what constitutes and collectively comprises the singular “electronic right” or “digital right”. There has not been sufficient time for the publishing, media, or entertainment industries to fully crystallize accurate and complete definitions of phrases like “electronic publishing”, “web publishing”, “electronic right[s]”, “e-rights”, “digital right[s]”, or “first electronic rights”.

Nevertheless, electronic media and specifically the digital right and electronic right, have already changed our history. You can be sure that they will have some effect, at a minimum, on most author’s individual publishing deals henceforth, and will be the fodder of publishing lawyer and entertainment attorney discussion for years to come. The fact is, electronic uses inherent in the digital right and the electronic right already do compete with older, more traditional uses - particularly because digital and electronic uses are cheaper and faster to deploy, and can potentially reach millions of users in less than, as Jackson Browne might say, the blink of an eye.

Commerce is increasingly relying upon the Internet and other electronic phenomena, and the linchpin of this reliance is the digital right and electronic right. After all, you are reading this article, and ostensibly gleaning some information or material from it. The Web, for example, has already put a sizable dent in dictionary and encyclopedia sales, and anyone who tells you otherwise is probably an employee in a dictionary or encyclopedia publishing company or publishing lawyer in-houser in denial of the digital and electronic right, trying to protect his/her stock options. As the recent and well-known Stephen King pilot program will attest, fiction is the next subject matter area to be affected. Many of us book lovers including publishing lawyers and entertainment attorneys don’t like to think about it, but bound hard-copy books may soon become the sole province of book collectors and publishing lawyer vanity bookcases alone. The vast majority of book readers, however, may so wholly embrace the digital right and electronic right that they soon even lose the patience to wait for their “amazon.com” mailed shipment.

Very few people who work in the publishing, media, and entertainment industries, including as amongst fair-minded publishing lawyers and entertainment attorneys, should dispute that electronic uses inherent in the digital right and electronic right can easily cannibalize the older and more traditional forms and formats. This cannibalization will only increase, not decrease, as time goes on. Again, the author should put himself/herself in the mind-set of the publisher or its in-house publishing lawyer, when having this digital right/electronic right argument with the publisher or publishing lawyer. The publisher otherwise may want to invest marketing and personnel support in the author’s work, and perhaps even pay the author an advance for the writing. In their view, though, the publisher’s publishing lawyer or entertainment attorney argues, why should they do so, and not also capture the author’s digital right or electronic right?

The last thing that the publisher or its publishing lawyer or entertainment attorney wants to do is to pay the author - and then discover that the author has “scooped” the publication with the author-reserved digital right or electronic right, stolen the publisher’s proverbial fire, and undermined the publisher’s investment in the author and the writing. The concern of the publisher and the book company’s in-house publishing lawyer or outside entertainment attorney is rational and valid. If the publisher allows the author to potentially undercut the book by exploiting author’s reserved digital right or electronic right, then the publisher is threatening the publisher’s own investment in the author and in the written work. (And on some subliminal level at least, the company’s in-house publishing lawyer also knows that this could come out of his or her future comp).

Compromises are available. One traditional compromise effected between publishing lawyers or entertainment attorneys is a so-called “hold-back” on the digital right or electronic right, whereby the author promises not to use or license-out any author-reserved digital right or electronic right for a certain period of time following publication. The author will need some leverage to get a publisher to agree to such a compromise, though. And a publishing lawyer or entertainment attorney should draft the clause - the author’s publishing lawyer or entertainment attorney, not the publisher’s counsel!

An author may think that small “portfolio” uses (e.g., tucked inside greeting cards, on an author’s personal web site, etc.) are so minor, that they will never compete with publishing rights granted for the same work, and may tell the publisher or the company’s publishing lawyer or entertainment attorney as much. The greeting card example does seem innocuous enough, but the publisher and its entertainment or publishing lawyer will likely not agree with the author regarding the author’s personal web site. It is the electronic right or the digital right that really scares publishers and their publishing lawyers and entertainment attorneys, and is perceived as threatening to their long-term investment in the author and his or her work.

The distinction to be made here is between hard-copy portfolio uses, and digital right or electronic right “portfolio uses”. The fact is that computer-uploaded text is so easy and quick to transmit, receive, and read. The posted content’s popularity could also spread like digital wildfire, so quickly - for example, if a company hyper-links to the author’s site, or if “Yahoo” bumps the author’s site up in their search-engine pecking-order. Many successes have already been made by virtue of digital right and electronic right self-publishing, and more will follow. Traditional (book) publishers and their publishing lawyers and entertainment attorneys already realize this fact. Accordingly, traditional book publishers and their counsel also realize that once they acknowledge an author’s reservation of a “self-promotion” digital right or electronic right, they risk losing control of a potential wildfire dissemination method. Again, this would put the publisher’s investment at risk - but smart business people and companies and the publishing lawyers and entertainment attorneys that represent them, don’t put their own investments at risk.

4. The Party To The Contract That Has The Better And More Immediate Means and Resources To Exploit The Electronic Rights, Should Be The One Who Takes The Electronic Rights.

Here is the final point. If a contracting party has no means and resources to exploit a digital right or electronic right or a given bundle of them, then that same party has no business taking (or reserving to themselves) those same digital or electronic rights by contract or even negotiating such a position by and between publishing lawyers or entertainment attorneys. To analogize, if I am a screenwriter who options or sells my script to the Acme Production Company, LLC, through an entertainment lawyer, how should I react if Acme asks me to specifically and contractually grant them “theme park rights” in my literary property in the negotiation between the entertainment attorneys? (Don’t laugh - this practice is now very prevalent in film and entertainment deals).

Well, if Acme doesn’t have its own theme park, I (or my entertainment attorney) now have a powerful argument for reserving the theme park rights to myself instead. “Hey, Acme”, I (or my entertainment attorney) say, “... how do you have the unmitigated gall to ask me for my theme park rights, when you don’t even have the ability to exploit or use them yourself? You don’t even have a theme park!” I (or my entertainment attorney) then make it clear to Acme that I don’t intend to be giving them any trophies that they can put on a shelf to collect proverbial dust.

The same argument can work in the publishing context, particularly as argued between publishing lawyers and entertainment attorneys, regarding the digital right or the electronic right. The author can proverbially cross-examine the publisher (or try to cross-examine the company’s publishing lawyer or entertainment attorney) as to what successful past uses they have made of other author’s digital rights or electronic rights across multiple books. The company President may fudge the answer, but the publishing lawyer or entertainment attorney representing the publisher must answer truthfully. (One good reason to negotiate through counsel).

If the true answer to the question is “none”, then the author can use the “trophy” argument stated above. If the true answer is, alternatively, “some”, then the author has a negotiating opportunity to compel the publisher and its publishing lawyer and entertainment attorney to contractually commit to digitally and electronically publish the author’s work, too. The author can argue: “I won’t grant you the digital right or electronic right unless you, publisher, contractually commit in advance as to how specifically you will exploit them, and how much money you will spend in their development and marketing”. The author or the author’s publishing lawyer or entertainment attorney can then carve those electronic right and digital right commitments right directly into the contract, if the author has the leverage to do so. Again, one should not try this at home - but instead use a publishing lawyer or entertainment attorney.

Needless to say, once the author makes the publisher commit, presumably through publishing lawyer or entertainment attorney counsel, to a development budget or other marketing or “release” commitment for the digital right or the electronic right, then both the author and the publisher might thereby also have some basis for numerical valuation of the rights themselves. And, it is an entirely reasonable argument for an author or author’s publishing lawyer or entertainment attorney to say to a publisher that: “I will license/sell you the following listed digital right[s] or electronic right[s] if you pay me the following additional amounts for them:_____________________. And in the blank space, the rights can be listed like menu options as they have been broken out in Item #1 above, each to which separate dollar values – that is, price-tags - are now assigned.

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My media law practice as a publishing lawyer and entertainment attorney includes the drafting, editing, negotiation, and closure of agreements including digital and electronic rights matters as they may arise therein, as well as in the fields of film, music, television, Internet, and other media and art forms. If you have questions about legal issues which affect your career, and require representation, please contact me:

Law Office of John J. Tormey III, Esq.

John J. Tormey III, PLLC

1324 Lexington Avenue, PMB 188

New York, NY  10128  USA

(212) 410-4142 (phone)

(212) 410-2380 (fax)

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Publishing and Digital and Electronic Rights - Part II

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