Re: copyright and preprints

["Michael Carroll" <Carroll@law.villanova.edu>]

Brian,

I don't know that it's been written elsewhere, but I can address the
question here.  I very much appreciate Roger Clarke's work and his support
for Creative Commons licensing. [Disclosure:  I'm on the Creative Commons
Board of Directors].  But the article referred to below makes an assertion
that the rights under copyright that apply to a preprint are not affected
by the rights assigned in the postprint.  That statement does not
accurately reflect U.S. copyright law, at least.

I want to address two points: (1) the utility of Creative Commons licenses
for open access and (2) the rules of copyright w/r/t pre-prints and
post-prints.

1.  Creative Commons licenses.

Creative Commons licenses clarify and/or enlarge the user's rights with
respect to an article, whether that article is published or archived
online.  [Disclosure, I'm on the Creative Commons Board.] Self-archiving
under terms that are currently feasible (such as under a green publisher's
copyright agreement) is a desirable first step and should be done
immediately.  But I do not agree that the long-term needs of open access
have been fully met by a self-archived article made available under such
terms.

When a green publisher permits an author to post some version of the
article online, the publisher is silent about what rights the users have
with respect to the article.  Copyright lawyers interpret the green
publisher's permission to the author as also the grant of an implied
license to the public.  This implied license is important because nearly
every activity is what I call a "copyright event" because it implicates
the rights of the copyright owner.  [For more on this concept, see
http://law.bepress.com/villanovalwps/papers/art34/]

But the scope of the implied license that a green publisher grants to the
public remains fuzzy.  Does the reader have a right to make a RAM copy of
the article in order to read it?  Probably.  Does the reader have a right
to print the article or save a copy to her hard drive for personal use?  
Probably.  May the reader print out 50 copies and circulate them at a
conference on the theory that each attendee could have printed out an
individual copy?  Hard to say.  May an institutional repository repost a
copy found on an author's personal web site?  Unclear.

A Creative Commons license answers all of the above questions expressly
and in the affirmative.  The cause of open access is well-served when an
author retains sufficient rights to grant a Creative Commons license and
does so.  But for the time being, it is better than an author with the
limited rights that a green publisher has granted exercise those rights by
self-archiving today.  We can leave for another round what steps authors,
their employing institutions or their funders might take to ensure that
authors have the right to grant a Creative Commons license to the public.

2. Pre-prints/Post-prints.

This thread got started by the suggestion that a Creative Commons license
could be attached to a pre-print even though the author has transferred
all copyright interest in the article to a publisher.  Although
technically distinct, the copyrights in the pre-print and the post-print
overlap.

The important point to understand is that copyright grants the owner the
right to control exact duplicates and versions that are "substantially
similar" to the copyrighted work.  (This is under U.S. law, but most other
jurisdictions similarly define the scope of copyright).  A pre-print will
normally be substantially similar to the post-print.  Therefore, when an
author transfers the *exclusive* rights in the work to a publisher, the
author precludes herself from making copies or distributing copies of any
substantially similar versions of the work as well.

[For example, the singer John Fogerty of Credence Clearwater Revival fame
was sued by a record company, which had acquired the copyright in his song
"Run Through the Jungle".  The company claimed that Fogerty's later song
"The Old Man Down the Road" was substantially similar to the former song
and that Fogerty had therefore infringed the copyright that Fogerty had
signed away.]

Consequently, whether an author may grant the public a Creative Commons
license depends upon the rights the author has at the time of the grant.
If the author grants a Creative Commons license in the article prior to
transferring copyright to the publisher, the publisher takes the copyright
subject to that license.  But before doing this, authors should read the
terms of the publication agreement they are signing.  Some of these
agreements call upon the author to assign all rights under copyright,
which the author cannot do if he or she has previously granted a license.

Even when the copyright transfer agreement has such a provision, however,
publishers will sometimes agree to take the copyright subject to a
previously-granted license.  For example, every researcher who accepts
money from NIH or any other U.S. government agency grants to the U.S.
government a non-exclusive license to publish and reproduce the work. This
license is granted prior to any agreement that the author enters into with
a publisher and therefore published papers funded by NIH research are
subject to the USG's license.  Publishers are fully aware of the
government's license and therefore the terms of any copyright agreement
signed by a USG-funded researcher that purports to give all rights to the
publisher has to be interpreted accordingly.

With that background, let's return to the original question.  Once an
author signs a publication agreement, can that author grant a Creative
Commons license in the pre-print?  It depends upon the terms of the
agreement, as modified by any addendums.  Currently, under most
publication agreements, the author does not retain sufficient rights to
grant a Creative Commons license in either the post-print or the pre-print
after transferring copyright to the publisher.

Of course, the author retains the right that all members of the public
have to make a fair use of the article or exercise a fair dealing
privilege, but it is unclear whether this privilege would permit posting
of the pre-print without authorization from a publisher that owns the
copyright in the post-print.

All the best,

Michael W. Carroll
Associate Professor of Law
Villanova University School of Law
Research papers at 
http://ssrn.com/author=330326
http://law.bepress.com/villanovalwps/

See also www.creativecommons.org

>>> ann.okerson@yale.edu 10/24/2005 7:24:46 AM >>>

Brian:  Is this the article you were looking for:

http://www.firstmonday.org/issues/issue10_8/clarke/index.html 

"A proposal for an open content licence for research paper (Pr)ePrints, by
Roger Clarke.

ABSTRACT

Many academic papers that are to be submitted to refereed conferences and 
journals have been previously exposed to the author's colleagues. The term 
'preprints' has long been used to describe such documents. 'Departmental 
Working Paper' series were for many years a conventional vehicle for their 
publication. In the modern world, preprints are frequently transmitted 
electronically, variously as e*mail attachments and as files available for 
download via FTP or HTTP.

When a preprint is made available electronically, it is likely that the 
author provides the recipient not only with a copy, but also with a 
copyright licence. In most cases, however, the licence is only implicit, 
and the terms of the licence are unclear. This creates the potential for 
considerable uncertainties, and those uncertainties are of serious concern 
in the context of tension between for*profit publishers of refereed 
articles and the research communities that referee and edit them gratis, 
and depend on them for early access to information.

This paper briefly reviews the open content and ePrints movements, 
considers the interests of the various stakeholders, proposes a set of 
licence terms intended to satisfy the needs of all parties, and concludes 
that a particular Creative Commons licence type should be applied to all 
electronic preprints.

Ann Okerson/Yale library