Intellectual property and publishing
Abstract:
This chapter explores the issue of intellectual property, particularly copyright, as it relates to scholarly journal publishing. Library publishers must attempt to strike an appropriate balance between protecting authors’ rights and providing flexible reuse rights for readers. To this end, author publishing agreements, publisher intellectual property policies, and Creative Commons licensing are addressed. Additional considerations for publishers, including copyright in journal website content, and potential trademark rights in a journal’s name, are also discussed.
Similar to the goal of institutional repositories, scholarly journals exist for the purpose of documenting and sharing intellectual property – the “creations of the human mind” (WIPO, n.d., p. 3). This mission was documented in the dedication of the Philosophical Transactions, commonly recognized as one of the first scholarly journals, by the secretary of the Royal Society:
“The Great God prosper you in the Noble Engagement of Dispersing the true Lustre of his Glorious Works, and the Happy Inventions of obliging Men all over the world, to the General Benefit of Mankind […].”
This pursuit, of “dispersing” the knowledge and inventions of scholars for the “benefit of mankind”, is simultaneously enabled and stymied by the legal structures that govern the use of intellectual property. Of these, the most relevant is copyright. To a certain extent, copyright has become the defining issue for scholarly journal publishers – so much so that it has been called the “essence of publishing” (Glassie, 2012). Indeed, the Committee on Publication Ethics, in its Code of Conduct for Journal Publishers, reminds publishers of their responsibility to “protect intellectual property and copyright” (COPE, 2011b).
There is no question as to whether library publishers should – as other journal publishers do – protect copyright. But in determining how best to protect copyright, library publishers have an opportunity to distinguish themselves from traditional toll-access publishers. For library publishers, protecting copyright means implementing policies and practices that: (a) guide authors’ flexible yet legal use of others’ intellectual property, (b) support authors’ intellectual property rights, and (c) enable liberal use/reuse of authors’ work by readers. If this strategy is pursued, library publishers should be able to demonstrate that a publishing model in which intellectual property is simultaneously respected while being openly shared is beneficial for the broader system of scholarly communication.
Permissions and fair use: protecting the balance of copyright in the process of creation
As noted earlier in this text, U.S. copyright law is based on the constitutional premise that creators’ exclusive intellectual property rights should be limited and that the ultimate purpose of such rights is to “promote the progress of science and the useful arts” (U.S. Constitution, 1787) – not to restrict access and use of creators’ works. Within U.S. copyright law, the concept of fair use is intended to preserve this balance between creators’ exclusive rights and the public’s ability to benefit from others’ creations (see Chapter 2 for a complete description of fair use). However, although fair use explicitly includes uses such as “criticism”, “comment”, “scholarship”, and “research”, most publishers require their authors to obtain permission if they wish to use any copyrighted materials in their articles (with the exception of small quotations of nonfiction material) – effectively negating the benefit offered by fair use.
For commercial publishers, the requirement for authors to obtain permissions for the use of third-party copyrighted materials is understandable. Commercial use of copyrighted material is generally considered to weigh against a determination of fair use – so it is simpler and less risky to require authors to obtain permissions. However, for nonprofit publishers and especially for open-access publishers (library publishers fall into both categories), the same logic does not apply. While it is still simpler and less risky to require authors to obtain permissions, there is a less compelling argument to do so in instances where a reasonable argument for fair use may be made. If anything, there are persuasive arguments to be made to the contrary – in favor of library publishers supporting their journal authors’ fair use of others’ work:
The process of obtaining permission is not always simple, particularly when ownership of copyright is unclear, and can place an unnecessary burden (both in time and money) on authors (who are usually responsible for seeking permissions; Jassin and Schechter, 1998).
It may be difficult or impossible to obtain permission if an author is including copyrighted material for the purpose of providing an unfavorable critique of the material – creating a chilling effect on intellectual freedom.
If scholars do not exercise fair use – and test the bounds of what is permissible – the courts may eventually define fair use in narrower terms, effectively stunting what was intended as a broader benefit (Lindberg, 1997).
An important factor for the courts in determining what is fair use in a specific instance is whether that use is considered fair according to “standards of accepted practice” in the author’s discipline (ARL, 2012, p. 9). If fair use is not commonly exercised within scholarly journal publishing, and if such use is not recognized and codified, it may inhibit future authors’ ability to rely on fair use.
Although the first two arguments are important, it is the latter two that should prove most persuasive for library publishers – within them is an opportunity for libraries to provide further leadership related to fair use and to help strengthen the concept of fair use. For library publishers that do wish to expand support for fair use within their journals, the ARL (2012) Code of Best Practices in Fair Use for Academic and Research Libraries provides a strong model of thoughtful and reasoned guiding principles. However, because the Code of Best Practices does not explicitly address fair use within a publishing context, libraries should also consult the Society for Cinema and Media Studies (SCMS) Statement of Fair Use Best Practices for Media Studies Publishing (2010). Although the SCMS Statement specifically addresses the use of media materials (e.g., film stills) within scholarly publications, the principles expressed are relevant to other types of copyrighted images and materials – and could easily be adapted for publications in other disciplines. For example:
“Principle: Because the use of examples of copyrighted work within academic publications is generally transformative in purpose and audience, media scholars believe that such use constitutes fair use.”
(SCMS, 2010, p. 182)
When library publishers (or their journals’ editors) are developing fair use guidelines for authors, a central consideration should be that in the principle above – whether or not the proposed use is transformative. Both ARL (2012) and SCMS (2010) have stressed that, despite the four-factor test for fair use, the courts are increasingly emphasizing the nature of a use (is it transformative?) and whether the amount of the copyrighted material used was “only as much as necessary for that transformative purpose” (SCMS, 2010, p. 181). Although the other factors should still be considered as they are part of copyright law, the idea of transformative use should receive special consideration in library publishers’ policies and best practices.
It is important to note that support for authors’ fair use of others’ work and requirements for authors to seek permissions are not mutually exclusive ideas. To most responsibly protect the balance in copyright between creators’ rights and users’ benefit, library publishers should work with their journal editorial teams to develop policies that address both fair use and permissions. Although the library should encourage authors to consider whether their uses are fair, it will not always be appropriate or reasonable to claim fair use (e.g., if a use is not reasonably transformative). Therefore, each journal should have clear guidelines for authors as to when permissions should be sought, and what type of permission documentation the journal will require from authors in those instances. Issues to consider when drafting permissions guidelines and procedures include (Jassin and Schechter, 1998):
responsibility for obtaining permissions and paying any required fees (author or publisher);
guidance on identifying the appropriate rightsholder;
specific policies for the use of orphan works;
The determination as to when permission must be sought, and when authors may rely on fair use, will likely vary by discipline and journal, but the objectives should remain the same: (a) promote authors’ ability to create new knowledge that builds on existing work and (b) honor the rights of copyright holders by seeking permission when necessary.
Author publishing agreements: protecting authors’ rights
Copyright has traditionally been the currency with which authors paid for the privilege of being published in a scholarly journal. As discussed in Chapter 6, this transfer of copyright from author to publisher is entirely unnecessary for open-access journals – and even traditional subscription journals have decided that assignment of copyright to the publisher isn’t warranted (e.g., Malchesky, 2005). However, despite its growing irrelevance, the traditional copyright transfer agreement does highlight one important fact: authors have exclusive rights in the work they create (with some exceptions, which will be discussed below). If a journal wishes to publish an author’s work, it must either be assigned those rights or receive permission to exercise those rights.
Assuming that they do not require copyright assignment, library publishers must obtain permission from an author to publish and distribute the author’s article. The most effective way to do this, as noted in Chapter 6, is through a license (which is usually embedded in the more comprehensive author publishing agreement). A license may be either exclusive or nonexclusive; the former grants the publisher sole permission to exercise specific rights while the latter allows the author to grant permission to others to exercise those same rights. Although an exclusive license may seem more favorable to authors than copyright assignment, there is often little functional difference. Take, for example, the License to Publish from the American Association for the Advancement of Science. In the license, authors are required to agree to the following:
“[T]he sole and exclusive, irrevocable right is hereby granted to AAAS to publish, reproduce, distribute, transmit, display, store, translate, create derivative works from and otherwise use the Work in any form, manner, format, or medium, whether now known or hereafter developed, throughout the world and in any language, for the entire duration of any such right and any renewal or extension thereof and to permit/sublicense others to do any or all of the foregoing as well.”
Even though later in the AAAS license it states that the author retains ownership of the copyright in the article, that copyright is virtually meaningless. The publisher has been given the “sole and exclusive right” to exercise all of the relevant rights provided to authors under U.S. copyright law. While the license also allows the author to retain a range of nonexclusive rights in the use of his or her work, the author has lost the ability to grant others (with specific exceptions) permission to use the work. The end result is that the author’s right to use his or her own work is constrained and the publisher is in a position to grant (or deny) others’ requests to use the work – much as the publisher regulates use when copyright is actually assigned to the publisher.
Given these limitations, a nonexclusive license should be considered preferable for library-published journals. A properly constructed nonexclusive license can provide the publisher with both (a) the ability to be recognized as the initial place of publication for a work and (b) the permission necessary to perform actions related to publication, dissemination, and preservation of an author’s work. For example:
“If your Article is accepted for publication, you agree to grant to Journal of Librarianship and Scholarly Communication and its publisher worldwide first publication rights for the Article. You further agree to grant to Journal of Librarianship and Scholarly Communication and its publisher a non-exclusive license to publish, print, copy, transmit, display, distribute, archive, index, revise, and create new works derived from the Article (including the right to grant sub-licenses to third parties to do all of the foregoing), for the duration of the Article’s copyright, in all languages, throughout the world, in all media and formats. You further agree and acknowledge that the foregoing license creates the right, but not an obligation, for Journal of Librarianship and Scholarly Communication or its publisher to do any or all of the foregoing.”
This license gives the journal first publication rights for the article, the nonexclusive right to publish and archive the article in different formats, and the ability to grant licenses to indexers and aggregators to include the article in their databases. In this licensing model, an author’s retention of his or her copyright is functionally meaningful – not only do authors retain the right to do whatever they like with their own work, they are able to give permission for others to use it as well – without needing to go through the publisher. The publisher becomes the first formal point of distribution for the author’s work, but does not control how the author chooses to distribute it after that. (The one limitation on authors’ further use of their work, of course, is that they may not grant another party an exclusive license, as they have already granted a license to the journal.)
Author’s note: although a nonexclusive licensing model is recommended here, there are circumstances when a library publisher may wish to consider a model similar to that of the AAAS (grant of exclusive license to the publisher, with the author allowed to retain certain nonexclusive rights). As Thatcher (2008) observes, the grant of an exclusive license to the publisher allows the publisher to pursue infringement claims against third parties (rather than that responsibility resting solely with the author):
“[U]nder US copyright law the holder of a non-exclusive right has no standing to sue for infringement. […]. The copyright that the publisher owns in the journal as a ‘collective work’ does not suffice to give publishers the leverage they need to combat piracy, which is a profound problem internationally. Without some kind of exclusive right in the articles themselves, a publisher could not prevent, for instance, a competing publisher from selecting articles to republish in another collective work, whether another journal or an anthology. Authors themselves would have no incentive to oppose such additional distribution of their articles; indeed, they would likely benefit from the greater exposure. Turning over just nonexclusive rights to their publishers, then, would leave the publishers defenceless against all kinds of theft that would undermine their business.”
If an institution or library publisher wants to retain its ability to pursue infringement claims, and also wants to protect authors’ rights, it could consider crafting an author agreement wherein exclusive rights are granted to the publisher but the author retains more expansive rights than those present in the AAAS agreement. For example, additional nonexclusive rights retained by the author could include the right to post the published version of the article in a repository or the right to authorize others to reproduce or distribute copies of the article.
Confirming an author’s ability to grant a license
Regardless of what type of license a library publisher decides to obtain from its journal authors, the library needs to be mindful of instances where an author may not legally be able to grant a license. The most common instances are (a) when an article is considered a work for hire or (b) when an article was written by an employee of the federal government in “the scope of his or her employment” (USCO, 2012a, p. 2). In the former instance, the employer of the author(s) would own the copyright in the article and would need to grant the license (the author may be able to grant the license as a representative of his or her employer). In the latter case, because federal government works are not eligible for copyright protection in the U.S.,2 there are no copyrights to license, although authors can still indicate their willingness to have the journal publish their articles. (If a work is co-authored by federal government employees and nongovernment individuals, the nongovernment author(s) may need to provide a license to the publisher; CENDI, 2008).
If a journal decides to require an exclusive license, it is important to know that if copyright in a work is owned by more than one person, it is necessary for all co-owners to agree to grant the license (Jassin and Schechter, 1998). Any one author can grant the journal a nonexclusive license because it doesn’t infringe on his or her co-authors’ rights to grant similar licenses to other entities – but granting an exclusive license would affect those rights, so all authors have to agree.
Protecting moral rights
The rights that a library publisher licenses from an author are rights in the use of the intellectual property in question (the article). Though these property rights are important, the rights of an author to be credited as the author of a work, and for the integrity of that work to be protected – moral rights – are equally significant to authors. However, while moral rights are recognized internationally (Bird and Ponte, 2006; Standler, 2012), they are not explicitly addressed in U.S. copyright law for nonvisual works (Rosenblatt, 1998). Despite – or perhaps because of – the absence of meaningful moral rights for authors in U.S. law, library publishers should strongly consider integrating analogous protections into author publishing agreements. These protections should, at minimum, guarantee that in all uses of the article by the publisher, the author will be appropriately credited.
While it is important for publishers to respect authors’ moral rights (whether or not such rights actually exist in U.S. law), the greatest risk to the rights of attribution and integrity comes not from publishers but from readers/reusers. If a library publisher wishes to provide more robust protections for authors’ rights, it should carefully consider how best to license (for readers) the work it publishes. The ideal licensing approach will balance the protection of authors’ rights (both intellectual property and moral) with the promotion of wide use of authors’ articles.
Licensing: protecting readers’ ability to build on authors’ work
Assuming that a library publisher permits authors to retain the copyright in their articles, the issue of ownership is settled. However, the publisher must still decide what level of control it will allow its authors to retain over their work. As noted above, this question should be approached with the goal of balancing authors’ rights with readers’ ability to use authors’ work (as well as the publisher’s ability to distribute and archive the work in question).
The baseline for authorial control is provided by copyright law. If no license is applied to articles, then readers will be limited in their uses to those permitted by copyright law (fair use, etc.). This provides the greatest control for authors by requiring readers to seek permission for many types of common uses – but it also places the burden of handling permission requests on authors and creates a temporary roadblock for readers. Some publishers have argued that the best way to alleviate this burden on authors, and to streamline access for readers, is to transfer copyrights to publishers so that they can centrally handle permission requests. However, for libraries that are committed to an open-access publishing model, there is a much better option – licensing.
As discussed in Chapter 6, article licenses can both remove the barrier of the permissions process and provide clarity for readers about how they may use an article. For example, Creative Commons licenses (see Chapter 2 for license descriptions) provide clear guidelines for the use of articles. Even though Creative Commons licenses eliminate some measure of authorial control over articles (by removing the need for readers to seek authors’ permission for uses allowed by the license), they also have the important benefit of protecting authors’ moral rights – something that U.S. copyright law does not offer. By requiring appropriate attribution as a condition of every Creative Commons license, the license potentially offers legal recourse to authors if they are not properly credited for their work. The more restrictive Creative Commons licenses also require the author’s permission if anyone wishes to create derivative works (e.g., CC BY-ND), which is one way of protecting the integrity of an author’s work (Sundara Rajan, 2011).
The type of Creative Commons (or other) license that a publisher elects to use may differ from journal to journal and will likely depend on the journal’s field and editorial team. All of the Creative Commons licenses permit uses that extend beyond those allowed by U.S. copyright law, as well as offering protection for an author’s right of attribution. Although open-access purists may argue that only the Creative Commons Attribution license (CC BY) provides readers truly open access to authors’ work, there are equally strong arguments for the use of more restrictive licenses (Graf and Thatcher, 2012; Royster, 2012). At minimum, a licensing strategy that requires appropriate attribution by users and that allows unlimited noncommercial distribution should be the goal.
It is worth noting that, although most journals will only need to select a licensing model for their articles, other journals may also need to consider different licensing models for supplemental content. For example, a Creative Commons Attribution license, which is appropriate for an article, would be less appropriate for a database. When determining the overall licensing model for a particular journal, the publisher and editorial team should try to anticipate what formats of content – primary and supplemental – the journal will be publishing. This will help identify appropriate licenses that best balance author and user rights for the type of content in question.
Beyond the balance: further intellectual property considerations
Protecting the intended nature of copyright – a balance between authorial rights and public benefit – should be the central intellectual property concern for library publishers. However, there are additional considerations for publishers with regard to the intellectual property of journals themselves (as distinct from the intellectual property present in individual articles). The most relevant areas for library publishers to consider are (a) copyright in the content of the journal’s website and in the journal’s issues as collective works and (b) trademark rights in the journal’s name and/or logo.
Website copyright
Although a journal’s website may seem relatively insignificant compared with the content of the journal itself (i.e., the articles), it is important to remember that websites, just like any other form of original expression, are protected by copyright under U.S. law. Library publishers should determine who owns the copyright in each journal’s website and should identify the owner on the website itself with a copyright notice. If desired, as with other copyrightable works, the copyright for a website may be registered with the U.S. Copyright Office. If copyright is registered, it is vital to understand that “the registration will extend only to the copyrightable content of the work as received in the Copyright Office and identified as the subject of the claim” (USCO, 2012b, p. 1). In other words, if the website is redesigned or content is revised, it will likely then need to be reregistered as a new work. If a library decides that it does want to register the copyright for a journal’s website, it should ensure that it has the right to do so. If the website was created by library publishing staff, it should be considered a work for hire and the library will own the copyright. However, if content on the website was created by the editorial team of the journal or a sponsoring society, they may own the copyright in at least part of the website (Glassie et al., 2012). This should be established prior to posting a notice of copyright ownership on the website or pursuing registration. (If the library is using proprietary or open-source software to host its journals, a distinction will also need to be made between the intellectual property of the journals and the intellectual property in the underlying code of the publishing platform.)
In addition to deciding whether or not to register the copyright for a journal’s website, the publisher should also determine what uses of website content it will allow by readers. If a journal is open access, but does not want the same terms of use that apply to articles it publishes to apply to its website content, it is advisable to clearly state this in the journal’s policies. Take, for example, this statement on BioMed Central’s website:
“3. Unless otherwise indicated, this Web Site and its contents are the property of BioMed Central Limited, whose registered office is situated at Springer-Verlag, GmbH, SpringerOpen, Tiergartenstr. 17, 69121 Heidelberg. The copyright in the material contained on this Web Site belongs to BioMed Central or its licensors. The trademarks appearing on this Web Site are protected by the laws of England and international trademark laws. Subject to clause 4 below reproduction of material on this Web Site is prohibited unless express permission is given by BioMed Central.
4. All articles published by BioMed Central on this Web Site marked ‘Open Access’ are licensed by the respective authors of such articles for use and distribution by you subject to citation of the original source in accordance with the Open Access license.”
(Terms and Conditions, BioMed Central, http://www.biomedcentral.com/about/tandc)
However, if the publisher wishes to make its entire website open access, it can certainly do so as well (assuming, of course, that it owns the copyright or has the copyright holder’s permission to license the content accordingly). This is the position taken by the Public Library of Science: “All site content, except where otherwise noted, is licensed under a Creative Commons Attribution License” (http://plosone.org/).
Copyright in collective works
Beyond the copyright in the journal website itself (consisting of the site design, policies, and any supplemental content not part of the journal issues), copyright also exists in individual issues of the journal as “collective works”:
“A ‘collective work’ is a work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”
Even though the authors of the individual articles own the copyright of those articles, a separate copyright exists through the original arrangement of the articles into a journal issue. As with other copyrightable works, it is not necessary to register the copyright of the journal issues. However, if a publisher wishes to do so, there are options for registering single issues or groups of issues with the U.S. Copyright Office (see U.S. Copyright Office Circular 62: Copyright Registration for Single Serial Issues or Circular 62B: Copyright Registration for a Group of Serial Issues). Claiming copyright for a collective work does not affect the copyright ownership of authors in individual articles. As with journal website content, though, ownership of copyright in the journal as a collective work should be clearly established in any agreements between the library and publishing partners (e.g., societies) – this will determine who has the right to register the copyright in the collective work.
Trademarks
A trademark (or service mark) is “any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others” (USPTO, n.d.). As with copyright, U.S. law does not require registration of a trademark; an organization may provide notice of an unregistered trademark by using the 
symbol. Once a mark is registered with the U.S. Patent and Trademark Office, the organization may use the ® symbol and is afforded additional legal protections (Hirtle et al., 2009). Registering a trademark gives the owner the exclusive right to use the mark for the type of product for which it is registered (USPTO, n.d.). For example, only Apple® can produce a mobile digital device called an iPod®.
Library publishers need to be aware of trademarks for two reasons: first, they may wish to register a trademark for a journal name and, second, they must ensure that journal names – and journal website domain names – do not infringe on an existing trademark. While it is not necessary to register a journal’s name as a trademark, it may be advisable to consider if the library is devoting significant resources to developing and publishing an innovative new journal in an emerging or underserved discipline. This can offer the library protection against other institutions using the same journal name and causing confusion or “dilution” of the journal’s identity among readers (Glassie et al., 2012, p. 17).
When considering the name for a new journal, the library should work with the journal’s editorial team or appropriate publishing partners to make certain that the name is sufficiently unique and does not infringe on existing trademarks. There are four places to start when looking for existing journal names: the Library of Congress online catalog, Ulrich’s Global Serials Directory, the U.S. Patent and Trademark Office, and a general web search. If a journal with the desired name doesn’t show up in any of those places, it is safe to assume that the name is available to use. Even if a journal name does appear in the results of a USPTO search, examine the entire record to see if the trademark is active or if it has lapsed. If a trademark is “abandoned” – for example, because of lack of use or because the owner did not actively combat infringement of the mark – the name is available for others to claim (Glassie et al., 2012, p. 20).
If a journal is the official publication of a professional society, that society would be the appropriate body to own the trademark rights to the journal’s name and/or logo. If the journal is edited by an otherwise unaffiliated group of scholars, though, it would likely make more sense for the library (as publisher) to register the trademark for the journal, as the library would be best positioned to provide continuity across editorial team changes. If, however, the journal’s editorial team creates a legal entity for the journal (e.g., a limited liability company or S corporation), that entity could own the trademark. As with copyright ownership, trademark rights should be addressed in a contract or memorandum of understanding (see discussion of memoranda of understanding in Chapter 5) between the library and the society (or editors) that delineates the terms of the publishing arrangement.
Protecting intellectual property through policy (and contract)
Beyond agreements between libraries and their publishing partners, it is vitally important that library publishers clearly document and communicate their positions on all the intellectual property issues discussed in this chapter. The best way to do this is by creating policies and written agreements to describe the relationships between authors and publisher, authors and readers, publisher and readers, and publisher and partners. These types of documents – governing intellectual property and authors’ rights, acceptable use by readers, and responsibility for journal content – are necessary to ensure that journals are published in a consistently legal and ethical manner. This policy infrastructure will be the focus of the following chapter, which will address not only intellectual property, but also publication ethics, privacy, and other issues that publishers must address through policies and contracts.
2.As noted in Chapter 2, although U.S. federal government works are generally not copyrightable under U.S. law, “the work may be protected under the copyright laws of other jurisdictions when used in these jurisdictions. The U.S. government may assert copyright outside of the United States for U.S. government works” (Copyright and other rights …, 2013).