Increasingly, owners of works that can be digitised and archived on the Internet must think about how best to balance the promotional benefits from allowing their work to be accessed freely over the Internet, while still retaining some control over the works.
Google’s plan to scan the collections of Oxford, Harvard, Stanford and Michigan Universities and the New York public library has prompted more than 8,000 authors to bring an action in the US courts for copyright infringement. Google’s senior product counsel Alexander Macgillivray, speaking at a conference in Oxford in November this month, defended Google’s copyright policy and said that Google was actively searching for a compromise that all parties would find acceptable.
But Yahoo! hopes to avoid such costly litigation by focusing on works that are in the public domain. It has adopted an opt-in policy in relation to copyright works and says it will only publish works with the express permission of the copyright owner.
It is not just commercial organisations like Google and Yahoo that are digitising and archiving copyright works. The European Union has announced plans for a European digital library, in a move aimed at protecting Europe’s cultural heritage from the US-based commercial enterprises. In the UK, research councils, which provide research grants to academics, are backing the open access movement by making online access a condition of funding, although they face opposition from publishers who fear free access will hit book and journal sales. However, academics who are backing open access have been looking at alternative ways of generating income, such as through sponsorship deals with up-front fee payments or with creative royalty deals that might include a share in the advertising revenue generated by a Web site.
But it is not just authors that could see their work made freely available on the Internet. Any recordable and searchable content, including words, music and images, could be stored in the online archives.
Contracts for any copyright works that have the potential to be digitised and made available online should expressly address the issue of online works. This is particularly important where online exploitation could be significant, in which case the copyright owners may insist on royalties with a minimum payment for each year the content is available.
Most copyright assignments and licences will be drafted widely enough to include online, electronic and mechanical rights in the assignment or licence. But, in order to make money out of their works, copyright owners that spot the online potential of their works are likely to want to reserve some kind of control over online exploitation. In order to do this, copyright owners need to carve-out their electronic rights from the general licence to use their works. Alternatively they may permit digital exploitation but want to retain control through establishing defined limits in the contract. For example, the owner may want to restrict free online access to a limited period and after this time to be entitled to a percentage of any fees that the online access provider may generate from the use of the work.
As copyright owners become more aware of the online potential of their works, it is likely that they will be more aggressive in asserting their rights by dealing with digitisation and online publishing in contracts and before the courts. Although it is still unclear how revenue will be generated, companies and individuals that are creating copyrighted works should think carefully about how best to protect their copyright works in a changing market to ensure they get some of the cash that could be generated from the online exploitation of their intellectual property.
Anne Mizzi is a solicitor specialising in media and technology in the London office of leading Scottish firm Shepherd + Wedderburn. She worked as a journalist for three years before becoming a lawyer. She can be contacted on: Anne.Mizzi@sheppwedd.co.uk
