RE: Re. Hathi Orphans?

["John Cox" <John.E.Cox@btinternet.com>]

Sandy Thatcher is absolutely right in his description of the 
reversion of rights to the author when a book went out-of-print 
in the print era.  US and European publishers were singing the 
same song on this topic.  It was, and still is, standard practice 
to include a clause in any book contract that automatically 
reverts rights to the author if the work had been out-of-print 
and unavailable for more than an agreed period (12 months or two 
years). Whether the author has assigned copyright to the 
publisher, or granted exclusive publishing rights while retaining 
copyright, makes no difference; the rights granted revert to the 
author.  The real problem with orphan works is that the author 
may be untraceable, or that his/her successors in title (if 
he/she has died) may be difficult or impossible to trace.

The basic legal and contractual position has not materially 
changed.  What has changed is that technology (internet, e-books, 
digital print-on-demand technologies) means that books may remain 
"in print" and available more or less forever.  However, if the 
publisher still maintains the title in print, it is not usually 
an orphan work with an untraceable rightsholder.

The problem lies principally with untraceable authors or their 
executors, and with those publishers that have not maintained 
full rights files on older works, perhaps through mergers and 
acquisitions, or - let's be frank - incompetence. Simply to 
generalize and point the gun at "publishers" in general is 
misleading and unhelpful.  The problem is more complex than that. 
Otherwise we would have solved it.

John Cox

Managing Director
John Cox Associates Ltd
Rookwood, Bradden
Towcester, Northamptonshire
NN12 8ED
United Kingdom
E-mail: John.E.Cox@btinternet.com
Web: www.johncoxassociates.com


-----Original Message-----
From: owner-liblicense-l@lists.yale.edu
[mailto:owner-liblicense-l@lists.yale.edu] On Behalf Of Sandy Thatcher
Sent: 14 October 2011 00:39
To: liblicense-l@lists.yale.edu
Subject: Re: Re. Hathi Orphans?

The reality is that, until digitization came along, publishers 
generally reverted rights to authors for book that went out of 
print and no longer had any interest in their copyright status or 
ownership. In that era, publishers had an interest only in 
"orphan works" they wanted to reproduce portions of beyond fair 
use, and they had no systematic interest in researching the 
status of orphan works beyond those whose rights owners they had 
a need to track down.  One complication during that era is that 
some publishers were merged into others, or went out of business, 
and the ownership status of works whose copyrights had not been 
reassigned to authors before the merger or closure sometimes 
ended up being murky.

The advent of digital printing in for the form of POD, together 
with the creation of the "long tail" enabled by Google, changed 
everything early in this new millennium. Publishers no longer had 
much incentive to revert rights because, technically, no book 
ever needed to go "out of print."  In fact, some publishers tried 
to have reverted rights re-transferred to them again, so that 
they could reissue books as e-books and/or in POD editions. Those 
works for which the ownership status was murky required research 
by publishers to determine if they had the necessary rights to 
reprint them via POD or issue them in electronic form (older 
contracts not having anticipated such a possibility). This 
changed situation gave publishers new incentives to investigate 
the status not only of works owned by third parties they wished 
to use but works on their own backlists whose ownership status 
was unclear. So, for the first time, publishers had a good reason 
to do the necessary research more systematically than ever 
before.

Some publishers that own rights to older works but don't want to 
invest the money in digitize them are happy to have libraries or 
other institutions do this work in exchange for allowing them to 
be distributed open access. This is what the University of 
California Press started doing a while ago through the California 
Digital Library and what such presses as Duje and Pitt have done 
more recently.

Still, it takes sometimes a considerable amount of effort to 
determine whether a work is truly an "orphan" and many 
understaffed and underfunded presses cannot afford to make this a 
high priority. It is, in my opinion, therefore a welcome 
development that some well-funded entity like the HathiTrust 
should engage in this effort. Only it is imperative that the 
research is done thoroughly and well, as the embarrassing 
revelations from the Authors Guild have shown HT's process not to 
be yet.

Sandy Thatcher



>I fully agree with your analysis, Joe, and am well aware of the
>possibly divergent outcomes. However, and despite the possible
>majority of the "3rd category", we would reach a higher level of
>clarity in establishing rights. It could be also the basis for
>either a law or a court decision that would run roughly as
>follows: given that publishers have been asked to do this for X
>number of months or years, we can assume that anyone using now a
>book that has no known owner is not liable if an owner comes up.
>It will be equivalent to some form of "due diligence". Then, of
>course, if an owner appears, the book is placed back in the usual
>category of "books under rights", but without liability to the
>user if he/she desists immediately.
>
>The devil is in the details and, very frankly, I have not thought
>through all the implications, but it seems to me that such an
>approach could gradually bring all books into either a clear
>orphan status, or would reveal the identity of the owner.
>
>Obviously, I would rather see many Dukes. For the other, less
>generous, publishers, if they want money from the books they
>probably own, why don't they do it right now? If they don't, it
>is perhaps because they already know that this will not be a
>profitable proposition. Furthermore, it may that they like a
>murky and risky landscape because it serves them better than a
>clear one. But, if that is the case, the gradual clarification of
>the orphan field appears even more important.
>
>Jean-Claude Guedon
>
>Le vendredi 30 septembre 2011 Joseph Esposito a ecrit :
>
>>  Jean-Claude, be careful what you wish for.
>>
>>  A publisher identifies the owner of an orphan work.  If that
>>  owner is the publisher, does the publisher turn the rights over
>>  to another entity?  Or does the publisher put the work on a
>>  server, with a link to POD, monetizing the work if anybody
>>  happens to come along?
>>
>>  Some publishers (Duke just did this) will be happy to turn over
>>  works that have no commercial value (at this time) to third
>>  parties that share the publishers' mission.  Some will do the
>>  equivalent of what the STM association has recently
>>  promulgated: issue a statement of no commercial value so that a
>>  third party can use the material, but control continues to vest
>>  with the publisher.  And some publishers will seek to monetize
>>  the property (for that is what it is) themselves.  There are
>>  far more publishers in the third category.
>>
>> I happen to believe that publishers should research orphan
>> works and that they should have been doing this ever since the
>> possibility of low-cost distribution came on the horizon.  But
>>  the outcome of such a practice may be very different from what
>>  HathiTrust and other digitization projects envision.
>>
>>  Joe Esposito