Professor Carroll has withdrawn his misinterpretation of what I said. I thank
him for that.
He argues that if, say, 50% of words in a Final Article (F) also appear in a
draft (D), then assignment has been given in D as well to the publisher. So
how come so many theses are available in OA repositories when I suspect in many
cases, at least 50% of the words in an article based on a thesis also appear in
the thesis? This says institutions that post theses into a repository are
infringing the publisher's rights. Does Prof Carroll agree that such theses
should be withdrawn because of the risk of an infringement action?
We differ to a degree only. In my view, if the peer reviewers request only
trivial changes ("The correct year for Smith's reference in 2005, not 2006"),
then D is sufficiently similar to F to not enjoy separate copyright owned by
the author. But if it has major changes ("you have completely missed Jones'
major work on the topic and need to refer to it at length in your
introduction", "you must explain how you chose the sample", "you must justify
in rigorous way why you think the correlation means a causal relationship - or
else withdraw that statement", then F is sufficiently different from D to
justify my position (and indeed, explains why some peer reviewers are arguing
that inn such cases they should be identified as joint authors of F, but of
course they wouldn't dream of arguing that they are joint authors of D).
But what really disappoints me about this debate is the failure to address the
pragmatics, which is what I am primarily interested in:
1. No publisher has ever claimed that the Harnad-Oppenheim (HO) solution is
illegal. Instead, they have (rightly) said it is impractical - which, by
implication, means they accept it may well be legal. Publishers have access to
some pretty good IP lawyers…..
2. I don't recommend the HO solution for the reasons publishers gave. I
regard the solution as a desperate poor quality last resort. There are much
better ways to ensure OA thrives in the scholarly environment.
3. I hope Prof Carroll agrees with me that authors are foolish to assign (or
sign an exclusive licence) copyright to publishers and that they should adopt
one of the tactics I mentioned, or Mike Taylor's idea of putting F into an OA
repository and then telling the publisher they cannot sign the
assignment/exclusive licence because F is already out there.
Like Prof Carroll, I don't expect to add further this debate.
Professor Charles Oppenheim
________________________________
From: Michael Carroll <[email protected]>
To: Global Open Access List (Successor of AmSci) <[email protected]>
Cc: charlesoppenheim <[email protected]>
Sent: Friday, 7 February 2014, 21:42
Subject: Re: [GOAL] A reply to Professor Carroll
I'm afraid there's an option (d), which is that I did read Professor
Oppenheim's post, and I think it misstates the legal situation in both the
United States and the United Kingdom when an author assigns the exclusive
rights under copyright in the final version of an article. Specifically, the
statement that an assignment of rights in the final version of an article
leaves the author with rights in the draft, i.e., "This crucial difference
means I am free to do anything I like with D, including posting it on an OA
repository." I am not aware of any legal authority that would support this
understanding of the situation.
I take no pleasure in pointing this out, since Professor Oppenheim has done a
lot of good work on behalf of OA. But, it's not helpful to understate the
legal consequences of a copyright assignment or the grant of an exclusive
license. I realize that Professor Oppenheim did not say that a publisher could
do as I suggest, and I apologize for using a common form of argument among
attorneys to point out the consequences of one's statement of the law. Let me
rephrase to say, if Professor Oppenheim's statement of the law were correct . .
. .
With respect to Kevin Smith's and Dave Hansen's posts, I think we're all
roughly in agreement, but we're deeper in the weeds than we need to be. Dave,
this really is about the law and not about contract interpretation because we
are talking about the legal consequences of a standard transfer of the
exclusive right of reproduction, which is ubiquitous in publication agreements
that require either an assignment or an exclusive license. See, for example,
the IEEE agreement as an example.
http://www.ieee.org/documents/ieeecopyrightform.pdf
But, let's assume for a moment that the publication agreement assigns only the
exclusive rights in the final version of the article. The fundamental
misunderstanding is about what the author has given up. The author initially
owns the exclusive rights under copyright in the work of authorship, which is
the author's original expression contained in the final article. This means
the author has the legal authority to exclude others from making exact copies
or copies of the work that are substantially similar to the original. When the
author transfers this exclusive right to the publisher, the author now has the
legal status of any other member of the public with respect to the final
version of the article. [Let's leave aside for the moment any provisions of
the contract that may give the author rights to post a draft online.] Assuming
that fair use, fair dealing or other user rights do not apply, posting a
substantially similar version of
the final article online would infringe the publisher's right of reproduction
regardless of whether the person posting is the author or any other member of
the public and whether the substantially similar version is a prior draft or a
variation created after publication. That's what it means to give up your
rights under copyright, and that's why the record label was able to make a
claim against John Fogerty (referenced in my 2006 post) for allegedly
infringing the rights in a song that he had previously written but to which he
no longer owned the copyright.
It is simply not the law that an author who has transferred the exclusive
rights under copyright in the final version of an article still owns some
residual rights in a prior draft that would allow the author to post it online
if the draft and the final version are substantially similar to each other.
And, the courts have defined the zone of substantial similarity to be fairly
broad. Even if only half of the draft corresponds word-for-word with the final
version, that would be substantially similar and could not be posted.
I imagine this thread will continue, but I don't expect to contribute further.
Best,
Mike
Michael W. Carroll
Professor of Law and Director,
Program on Information Justice and Intellectual Property
American University Washington College of Law
4801 Massachusetts Avenue, NW
Washington, D.C. 20016
Office: 202.274.4047
Faculty page: http://www.wcl.american.edu/faculty/mcarroll/
Blog: http://carrollogos.blogspot.com
Creative Commons: http://creativecommons.org
Public Library of Science: http://www.plos.org
From: CHARLES OPPENHEIM <[email protected]>
Reply-To: "Global Open Access List (Successor of AmSci)" <[email protected]>
Date: Thursday, February 6, 2014 4:24 AM
To: "[email protected]" <[email protected]>
Cc: charlesoppenheim <[email protected]>
Subject: [GOAL] A reply to Professor Carroll
Professor Carroll has completely misrepresented me. As I made clear in my point
1, no-one can adapt or amend F without the publisher's permission. His
misrepresentation must have been as a result of one of three things: (a) Prof
Carroll never read my piece; (b) he read it and deliberately misconstrued what
I wrote; or (c) he read it and did not understand what I wrote. I was totally
clear that the author has rights to D, but cannot do anything with F. I now
expect Prof Carroll to apologise for misrepresenting me and to explain which of
(a), (b) or (c) was the reason.
He also notes the UK IPO statement that infringement covers copying all or a
substantial part of a copyright work. I agree, but such copying has to be AFTER
F is published. One cannot copy something before it is made! So he is again
referring to my case 1, and misrepresenting it.
Finally, Prof Caroll claims that most copyright assignments refer to assignment
of the article AND MORE. Not in my experience as an author of hundreds of
articles, and being in charge of assignments and licences in the 12 years I
worked for scholarly publishers. So I further invite Prof Carroll to give me
actual examples of such assignment wording. I asked Kevin, but he did not give
an adequate reply.
(Professor Carroll wrote:
On Professor Oppenheim's view, the copyright owner's exclusive right of
reproduction would be limited to controlling only verbatim copies. If that
were true, I would be free to republish the entire corpus of Elsevier
publications if I make only small changes to the articles similar to the
differences between a final draft and the final publication. Needless to say,
if this were the law, some clever publisher would have done just as I suggest.
But, this is not the law in the US or in the UK.
So even if the publisher were to be assigned rights only in the final version
of an article and most publication agreements are not this limited the scope
of those rights would preclude posting of substantially similar
versions whether those versions were created before or after the published
version is produced. (US law uses the term "substantially similar" whereas UK
law asks whether the copyright work has been copied "in substantial part"
but it effectively means the same thing in this context. See
http://www.ipo.gov.uk/types/copy/c-about/c-economic.htm)
Professor Charles Oppenheim_______________________________________________
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