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Have I lost my economic rights?

Posted: Fri Jan 20, 2012 11:27 pm
by Annie
I'm feeling very confused about who has control over my work and hope someone on this forum can clarify the situation for me.

In a nutshell, a former employer commissioned me to write a series of booklets, which I did on a freelance basis. We had a basic contract setting out our terms of engagement, but ownership of the copyright wasn't mentioned. At the time, having just emerged from employee status, I didn't realise that as a freelance I would own the copyright to my work, so for three years I allowed this company to do whatever it liked with it. It published the booklets, naming itself as the copyright holder, reproduced it on its website and used some of the content in derivative works.

When I discovered recently that the author -- not the commissioner -- generally owns the economic and moral rights to a work, I thought I should assert my rights, so I asked my client to change the copyright notice on some proofs from their name to mine and they refused. In response, I said that if they wanted to publish the work as their copyright, they would need me to assign the copyright to them. At the time, I was thinking of this as a mere formality, but after I did a bit of research on the internet I realised that the copyright is a valuable asset that shouldn't just be given away. The fees I'd been paid didn't really reflect the amount of use this company was making of the fruits of my labour, so I decided to ask for payment in return for the copyright.

To cut a long story short, after some exchange of emails (during which I outlined the legal situation as I saw it and indicated what i thought would be a fair price for the copyright), they've declined to pay me anything, claiming that it was 'understood' that they were purchasing unlimited and exclusive rights to my work.

I'm unsure now whether they're in the right or not. After all, I did allow them to do all those things without a specific licence for three years, so maybe they could claim that i did 'understand' (although really I hadn't thought about it at all - as I said, I hadn't realised when I signed the contract that being a freelance gave me more rights. If I had, I would have negotiated a higher fee.)

If anyone can give me an opinion on this I'd be very grateful as I don't know what's the right thing to do. I don't want to persist with a dispute if I don't have a leg to stand on, but neither do I want to back down if my copyright is really being infringed.

Posted: Sat Jan 21, 2012 11:04 am
by AndyJ
Hi Annie,
Thanks for all the details. It is helpful that you said how long ago you were commissioned to do this booklet, as this might be significant, as I will explain later.
The company are probably right in saying that when they commissioned you there was an implicit licence for them to use your work. However that would not be an exclusive licence unless it was stated in the contract you signed. Exclusive normally means that only the licensee can exploit the work, and even the copyright owner is prevented from doing so. Since the company seem to be claiming both exclusivity and a perpetual licence, that amounts to an assignment of copyright, which you have not agreed to, and it would be unreasonable to assume that you had, and in any case an assignment needs to be done in writing to be valid.
I mentioned the time aspect. If the period in which you did not raise this as being an issue had been fairly long (say 5 or 10 years) then the company might claim estoppel by acquiesence or laches. Sorry about the legal jargon, but I include them here in case they should crop up in any future correspondence between you and the company. Estoppel by acquiesence means that the company think it is fair for them to assume the type of licence they have by virtue of the fact that you acquiesed to this view. However this form of estoppel normally requires that the person who acquieses does so knowingly, which would not appear to be the case here. Laches is slightly different in that it refers more to the amount of time which has elapsed before the aggrieved party tries to assert their rights. The fact that it was about three years before you raised the issue could be relevant based on the likely 'lifetime' of the contents of the booklets. For example if the company might only be expected to use your text for a couple of years before it became out of date, then 3 years would probably invoke a defence of laches, but as it seems your text has more enduring value, I believe the balance tips more in your favour.
As you probably know from your research, the moral right to be named as the author of your work is one that needs to be asserted. There is no time limit on this, so I don't think laches could be claimed to deprive you of being credited in the future, but equally you would not have a claim to a retrospective credit. You have now asserted your moral right to be credited in a written form, so the company should acknowledge this going forward. The copyright notice on the booklets should name you as the author, and if they really wish to, the company as owner of the copyright in the typographical layout (the latter only lasts for 25 years from first publication).
So where do you stand? I think it would be both very hard and very expensive to litigate over additional payments as no doubt the contact you signed contained words to the effect that the sum due was in full and final payment, and you would therefore need to show that the company were in breach of the contract, which seems doubtful. The fact that copyright was not mentioned (a big mistake, I suggest) in the contract, goes in your favour and the presumption must be that copyright is yours. As for the implied licence, I think you should write formally to the company and say you do not accept that the licence is exclusive and that you reserve your right to exploit your work as you see fit. The issue of how long their licence might be valid for is more difficult. On balance I suspect they would have a strong claim that again it was implied that they could use the text for as long as it was useful to them, and because of laches, their interpretation is correct.
If you write to clarify the exclusivity issue, you should re-iterate your assertion of your rights under Section 77 of the Copyright Designs and Patents Act to be credited in future editions of the booklets and in any other use of your text.
If the company continue to assert their claim of exclusivity or to deny your right to a credit, then that might be the time to consult a solicitor about the way ahead, if you feel strongly about it.

Posted: Sat Jan 21, 2012 8:30 pm
by Annie
AndyJ, you truly are a hero. Thank you so much for your clear and detailed analysis. I feel as if someone just switched the light on after I've been thrashing around in the dark bumping into things and not knowing which way is up.

The main thing, though, is that I now feel I'm on firmer ground when responding to the company's letter. They were treating me as if I've behaved in a deceitful and despicable manner, so I feel much more confident about my position now that I know I haven't been entirely in the wrong.

You have my eternal gratitude.


Posted: Sat Jan 21, 2012 8:43 pm
by AndyJ
Hi Annie,
Glad to be of help. I hope you can get them to see sense.

Posted: Sat Jan 21, 2012 9:49 pm
by Annie
Just one other quick point, Andy. I've dug out the contract (in fact there was a series of three renewable yearly contracts, in the course of which I wrote a considerable amount of material for the company). It doesn't actually mention creative work or writing, but merely engages me to provide 'consultancy services' in return for an agreed fee based on a daily rate.

There's a clause stating that "All books, drawings, designs, documents, notes, committee papers, and records and computer software kept or made by or in the possession or control of the supplier or the consultant relating to the business of [the company] and all other property of [the company] are and remain the property of [the company] ..."

I took this to be mean everyday office documents and not the copyright in any creative work. Am I right?

Posted: Sun Jan 22, 2012 9:06 am
by AndyJ
Hi Annie,
My view would be that the clause you quote is probably too generic to encompass intellectual property rights. The main issue is what is meant by 'made by'. It seems to be concerned with physical property rather than the intangible. For example it does not address the issue of confidentiality or trade secrets. Clearly if you were a designer, then designs made by you and relating to the business of the company would seem to be covered by this clause, but you didn't make any booklets, you merely crafted the words. The paper or disks by which you transferred your words to them belong to the company, but the intellectual property is a separate entity. (cf a painting which owned by someone other than the artist).
This interpretation is bolstered by the fact that you were not - according to the contract - hired as a writer but as a consultant. Section 11 of the Copyright, Designs and Patents Act says
11 First ownership of copyright.

(1)The author of a work is the first owner of any copyright in it, subject to the following provisions.

(2)Where a literary, dramatic, musical or artistic work or a film, is made by an employee in the course of his employment, his employer is the first owner of any copyright in the work subject to any agreement to the contrary.

(3)This section does not apply to Crown copyright or Parliamentary copyright (see sections 163 and 165) or to copyright which subsists by virtue of section 168 (copyright of certain international organisations).
My emphasis added.
Clearly you were not an employee at the time, but this is the closest the Act gets to defining how ownership works in similar circumstances to full employment, since there are no work-for-hire provisions such as those which are contained in the American Copyright Act. To my mind the words I have emphasised become important in the reverse direction where a contract of service is intended to operate. As I have mentioned previously an assignment of copyright has to be in writing, and the contract makes no mention of anything being assigned.
To that extent I believe it would be perverse to read into the words of the contract an intention by both parties that copyright was to be transferred to the company, not least because copyright was undeniably yours to begin with, so it cannot 'remain' the property of the company.
But to be really certain of where you stand - assuming it is that important to you - you should consult a lawyer who specialises in employment law, or go to the Citizen's Advice Bureau or your union if you are member.

Afternote: It is worth adding that nothing in the part of the contract which you included affects your moral right to be credited as the author.

Posted: Sun Jan 22, 2012 3:11 pm
by Annie
Thank you Andy. You've more or less confirmed what I thought would be the case. The contract was actually a standard contract they drew up for non-employees who do very different work from mine, so I don't think they could really argue this clause was meant to include the supplier's intellectual property. It stands as the penultimate clause in the contract and seems to have been included to ensure that the supplier returns the company's property when the contract ends.

Thanks again for being so generous with your time.



Posted: Sun Jun 24, 2012 10:45 am
by Annie
I've been meaning to post an update for some time, but I've been holding off, thinking I could report that this matter has now been satisfactorily resolved. Unfortunately, that's not the case - yet.

Anyway, for anyone who's interested, here's a synopsis of 'developments' so far.

After thinking carefully about Andy J's advice, I decided to write to the company granting them a licence to continue to use my work, both in print publications and on their website, indefinitely. The only provisos I made were:
1. That they should immediately credit me as the author of works published on their website.
2. That if they ever reprinted the printed booklets, they should name me as the copyright holder and credit me as the author.
3. That as-yet unpublished works of mine should credit me as the author and copyright holder when they're eventually published.
4. That they not publish these as-yet-unpublished works on their website without negotiating a separate licence.

I also sent them a Notification of assertion of my right of paternity.

Unfortunately, my words have fallen on deaf ears. The only thing they were willing to agree to was to insert a statement in the small print that I'd asserted my right to be identified as the author. I pointed out that this wouldn't go far enough to satisfy the requirements of the Copyright Design and Patents Act, which says the author has the right 'to be identified in a manner likely to bring his identity to the attention of a person seeing [the communication] in question' and that it must be 'reasonably prominent'.

So far (and although I sent the Notification in February), none of my works on their website credit me as the author. To make matters worse, they have now reprinted two of my booklets. The reprints carry the company's copyright notice and, although they have indeed included a statement on the imprints page that I've asserted my right to be identified, they haven't actually identified me anywhere else as the author of the works.

I've noticed a further clause in the Act that says an assertion of the moral right to be identified as the author is binding on 'anyone to whose notice the assertion is brought', so I'm currently drafting individual letters to those involved in the actual publishing to tell them that they are personally liable for infringing my moral rights.

I think my next step will be to write to the company's ethics committee. One of their stated ethics is to comply with their legal obligations, so I'd be interested to see whether that's an empty statement or not.

Posted: Sun Jun 24, 2012 1:34 pm
by AndyJ
Hi again Annie,
Thanks for the update. These stories can be very instructive for those just coming to grips with copyright for the first time and hopefully your story can prevent much the same thing happening to someone in similar situation.
I think your quiet persistence is probably the best course. It is certainly cheaper than resorting to litigation, which even though it might ultimately bring you satisfaction, would undoubtedly be a bruising process.
You have the moral highground and you can use it to lob moral grenades at this mean-spirited company.

Posted: Tue Jun 26, 2012 11:05 am
by Annie
Thanks for the moral support Andy. That's essentially the view I'm taking - I can't afford to litigate, but I don't see why that should mean they get away with what can only be described as corporate bullying.

It doesn't cost me much in time or effort to fire off a letter to them once every few weeks, just to irritate them and let them know I'm not letting the matter drop. I may be a gnat buzzing around a giant, but I aim to get the odd bite in now and again.

I sent my latest round of letters off yesterday, and am now waiting to see what happens.

I'll keep you posted.

By the way do you know much about the Digital Economy Act? I get the impression the legislation was drafted to stop illegal downloads of music and movies, so it's not clear to me whether it includes things like my booklets being made freely available on a website without my permission. I thought it might be another avenue of action to keep up my sleeve.

Posted: Tue Jun 26, 2012 8:23 pm
by AndyJ
Hi Annie,
As you say, sections 3 - 18 of the DEA apply to subscribers to internet access services (that is to say customers of ISPs), rather than users of the internet in general terms and are specifically aimed at those who repeatedly download content which infringes copyright. It is not really applicable to your situation as you would need to ascertain the IP addresses of those who downloaded the pamphlets in order to pass the details to their ISP. In any case, this part of the DEA is not yet in force.

The way to tackle infringing works in your situation is to invoke the EU eCommerce Directive Article 14 which was brought into UK law by the Electronic Commerce (EC Directive) Regulations 2002 (SI 2002/2013). The relevant regulations are 19 and 22. This operates a bit like the American Digital Millennium Copyright Act (DMCA) take-down procedure in that a hosting service will not be liable for storing any infringing material unless and until they are made aware that the material is unlawful. Unlike the DMCA system, there is no specific format for submitting a notice under Regulation 22, so long as it includes the details specified in Reg 22.

But be prepared to back up your claim to copyright in the pamphlets in court if need be, as the hosting service can refuse to act on your notice if they feel you are bluffing or do not have a viable claim, based on what the company tell them in rebuttal to your notice.

Posted: Wed Jun 27, 2012 8:07 am
by Annie
Thanks Andy. That's helpful information. I don't think I'll go down that road except as a last resort.