Copyright Aid

My mother is related by marriage to an artist who died in 1958, and who wrote two books which included her etchings of dogs, which were published in the 1930s.

An executive editor from a major publisher in New York now wants to republish these books, and offered my mother $15,000 for the rights to republish. However, having thought last autumn that she could just go ahead and publish, the editor's legal department told her that there were copyright questions to sort out. This involved contacting the previous publishers to gain reversions, but they haven't replied.

Despite the lack of replies, Legal and the editor have found other evidence which they feel means they're OK to go ahead and republish anyway. I am not completely convinced (though it MAY be OK).

The problem is that to get these issues checked requires a minimum of £720 solicitor's time, which the publisher unsurprisingly won't pay for. Plus, I'd like to get the contract they've sent her checked out (though this worries me less).

My question then is: who carries the can in the future if one (or both) of the original publishers sue? The publisher or my mum as the advertised copyright owner on the verso?

Thanks.

Hi Henry,

I have assumed that the artist was either British or was habitually domiciled here at the time the works were created. This is significant because if she was not British and not domiciled here at the relevant time, different copyright rules will apply. This could be an extra complication especially as the new (potential) publishers are based in the USA - more on this later. Although you mentioned that your mother was related to the artist, you didn't say if she inherited the rights to the etchings, either through the artist's will or through the intestacy rules. Alternatively, any inheritance might also have been via some other family member who inherited from the artist and in turn passed on the rights in his/her will etc to your mother.

Copyright is a personal property right and so it passes to the heirs of a deceased copyright owner by the normal rules of inheritance. I imagine it is the confirmation that your mother indeed has good title in the rights which most concerns the potential new publishers.

If there is an original will (or series of wills) then it is relatively easy to establish a chain of title and this doesn't necessarily need to involve a solicitor. However if the rights have passed through intestacy rules, the process of establishing the chain could be more difficult. You would need to try and contact whoever acted as administrator of the artist's estate, and locate any grant of probate if it exists. There is a very fair chance that the intellectual property will not have been specifically mentioned as an asset within the overall estate. Since the intestacy rules can involve dividing up the estate into fractions which are shared among certain surviving relatives of the artist, it could be that ownership of the copyright is also jointly owned, and that your mother does not have the authority to act alone without the consent of the other beneficiaries. Indeed as your mother appears not to have been related by blood to the artist, under intestacy rules, much more distant blood relatives may have a stronger claim to the rights than your mother. Sorting all this out is likely to be the main reason the solicitor's fees are relatively high.

The issue of the original publisher may well be relevant, but I suspect that any interest they once had in the books from the 1930s has long since been extinguished, and would most likely have reverted when the books went out of print or on the death of the artist. Since the original publishers haven't replied to you, I think this may be confirmation that the company no longer has any extant rights. It would have been highly unusual for a publishing contract not to have a standard reversion clause in it.

You mention that the new publishers are a US firm. I hope that their legal department have some expertise in UK copyright law or engaged a lawyer in the UK to advise them. As I intimated earlier, they do things differently there. The method of calculating the duration of the copyright term in the USA during the first three quarters of the last century was completely different to how they were (and are) calculated in the UK. This of course would only be relevant if the artist held US nationality. Under UK law the copyright in the artist's work (whoever is the current owner) will last until 1 January 2029.

As the publishing deal is potentially valuable, the outlay of £720 may well represent a good investment, however only you/your mother can make that judgement.

That leads me on to the subject of checking the new contract. That is not only highly advisable*, it is vital that your mother does not sign away any anciliary rights, such parallel marketing deals. Any contract supplied by a publisher is going to be worded in their favour, and so you (or preferably your solicitor) should check it to make sure it treats your mother fairly. Ideally you should speak to a solicitor with publishing experience. You could try contacting the Design and Artists Copyright Society for more specific advice. In due course it may prove beneficial for your mother to join DACS if there is a possibility that the artist's work could be exploited in other ways, say as individual prints, in addition to the book sales.

On the question of liability in the event another claimant to the rights comes forward, I am pretty certain that the new publishing contract will contain a warranty clause indemnifying the publishers in the event this should happen, in which case your mother alone would be liable, assuming the publisher had carried out due diligence concerning title in the rights. Furthermore, the publishers will hold insurance against this eventuality.

*If you haven't already done so, check out a few of these sites for advice on how to deal with publishing contracts and what to look out for:
Artists and Writers
Writers Digest An American site, but may be helpful since the publisher is American
Savvy Bookwriters (Blog) Ditto

Thanks AndyJ very much for your time and efforts. They are very gratefully received here. My mum is very deaf and has an important operation to do with her deafness next Friday, so being able to answer questions about this at this time when she's got plenty else to be thinking about is very welcome.

To add more to what I originally said and in answer to your post ...

The original etcher was British, and lived in this country throughout her life. I'll call her L. She outlived her husband and had one son, R. L's probate record (only, so far (via gov.uk)) suggests that she left all she had to R. He was married to P. When he died in the late 1960s, he left a will but 'Probate' is all that gov.uk states against his name (presumably meaning it's not just a basic will leaving everything to his widow P). However, P retained lots of her mother-in-law's etchings, and was well-off. In 1973, P married again, to B (a widower himself with just one child, my mother). B died in 1987 (leaving all to his widow, still P) and that wife P died in 2002, and left everything to her now-step-daughter, my mother.

So, there remains the question of the first few wills. As you suggest yourself, I think it unlikely they'd have involved the passing of rights to the etchings or books to another person or to a charity, though only the wills would tell us this. So far the publishers have been content to receive from us a Word doc family tree showing the lnks between the people above, put together by me; and appropriate birth, marriage and death certs. proving those links. Plus the recent wills, but not those of L or R.

The questions then really aren't with my mother's rights to the IP (albeit that some questions remain), since the publishers questions were only made of us for a short time about this, but have continued for much longer about whether copyright still subsists with the original publishers of the books when those books were published in the UK and the US in 2 consecutive years in the 1930s.

I penned emails to people at the original publishers that were specified by the interested editor, but no replies were forthcoming despite reminders. The editor was not surprised, hinting that reversions were not big priority for publishers. Eventually she looked back at previous email corres. with local colleagues about copyright, one of whom had stated that back in the 1930s, contracts were not drawn up for term of copyright but for copyright as long as book was in print.

Another colleague added that under the UK law, copyright would have expired 50 years after the author's death (This is surely 70 years, isn't it? But that does mean that my mother would still hold copyright for the UK publication).

He then went on to say that US copyright is different and that as long as copyright was renewed within 28 years of initial publication there would be a maximum of 95 years from first publication, but that this was something we would need to confirm.

The US (c) part makes no sense to me as I have knowledge only of the UK rules - and that only sketchy!

As to the contract, my mother is more than happy to receive what they're offering, and by the end of all this may well be happy to be shot of the aggro, but having said that we may well seek basic advice to make sure she doesn't lose out unduly. Thanks for the links in that regard.

Any comments by you or anyone else on what else I've said will be gratefully received, but I don't expect it!

Thanks v m.

Hi again Henry,

Many thanks for the additional information.

Since you and the new publishers seem relatively content on the issue of your mother's title in the etchings, I won't say more about that. In any case that would involve the law on inheritance which is not really what this forum is about. And just as well really, because there's quite a lot to say about copyright and the US dimension.

But first, a mention about reversion again. I would tend to agree with your correspondent that, assuming a standard publishing contract was used, reversion, if it was mentioned at all, is likely to have been triggered by the works going out of print. The chances of the contract applying for the whole term of copyright are very slim, and if that proves to be the case, L was extremely poorly advised at the time she entered into the contract. But coming up to date, let us assume the worst case, namely that the original publisher still has full rights. Since they have not responded to your correspondence and asserted those rights, there may be a situation where something known as estoppel by acquiescence could work in your mother's favour later on. The Wikipedia article on this explains it far more clearly than I could so I will only add that there is a sub-species of estoppel called laches which may also be applicable. Laches is said to occur when a rights holder A deliberately fails to take action to protect those rights, knowing that B is likely to infringe upon them, and does so in order that he, A, may benefit from damages to which he would not have been entitled had he asserted his rights at the appropriate time. This is pretty arcane stuff, and of course hopefully it will never be necessary to argue this, but the failure of the old publishers to engage with you is a positive thing in some ways.

So moving from the arcane to the downright convoluted, let's try to unravel the transatlantic copyright issues of the first publications. Although international copyright norms have been greatly harmonised, this was certainly not the case in the 1930s when the USA operated a very different system to that found in most of Europe, including the UK. That said the US and UK had a bilateral treaty which meant, in theory, that each country would provide the same protection to works created in the other as they would to works created at home, provided this did not exceed the protection available in the first country. In other would where there was discrepancy between the two regimes, the lesser of the two 'benefits' would apply. In practice the arrangement was anything but reciprocal, however that is a story for another day. There were a number of specific matters to consider, such as whether works were published 'simultaneously' (actually within 30 days of each other*) in the two countries, and where the published edition was printed, together with the need for the US edition to carry a copyright notice. But the major factor which affects L's books is that in the USA at that time, a work had to be registered with the US Copyright Office (USCO) to gain any kind of copyright protection within the USA; there were other formalities but they don't appear to be relevant here.

Before delving deeper into this, I am not entirely clear what you meant when you said "those books were published in the UK and the US in 2 consecutive years in the 1930s". Was there a year's gap between the two books, or between the UK and US publication in each case? If it is the latter, it will have a bearing on the US copyright, since it would mean that publication there was not 'simultaneous' and so the US edition would not be protected by copyright at all. There is a whole other area of complication regarding where the US work was typeset and/or the electro plates were made, but in order to keep this as simple as possible I won't go into that here. Should you wish to, you can read up on that subject in an entertaining paper by the American academic James L West III here.

So to return to the main issue of US copyright itself, assuming that simultaneous publication had occurred, the work would have had to have been registered with the USCO there. The initial period of registration was 28 years, meaning that depending on the actual date of publication, copyright in L's books in the USA would have been secured until somewhere in the period 1958-1968. This is important because the later 1976 Copyright Act changed the system for calculating the copyright term, but it was not retroactive if the first period of registration had already lapsed by 1976. Continuing protection depended on the work being re-registered within the 27th year of the first term, which if successful, then extended copyright for a further 28 years (ie to roughly the period 1984-1994 in L's case) well within the effective date for the new provisions to apply. This is where the figure of 95 years from the date of publication comes in. However I am not at all sure that re-registration would have happened. It would have been up to the publisher to do this (and in any case L is likely to have died at around the same time it needed to be done) and since I suspect that the rights had already reverted at that point, or the publisher had lost interest in the books, there would have been absolutely no financial incentive for them to re-register the copyright. Of course they might also just have forgotten. The USCO did not send out reminders in those days. The USCO has said that less than 15% of all copyrights were re-registered in this period, and so it is probable that the US editions of L's books passed into the public domain there in the late 50s or early 60s. However things do not end there. One of the reasons that the 1976 Copyright Act came about was that after about two centuries of being outside the international copyright community, the USA was getting its legislation in line with the other major nations. Indeed by 1988 the USA had acceded to the primary international treaty on copyright known as the Berne Convention and so was obliged to amend the 1976 Act to afford the same rights to foreign works as to domestically produced works without the imposition of formalities. 'Formalities' here means the legal requirement for registration, copyright notices and similar things, before protection comes into force. The consequence of this was that copyright in older foreign works (those created after 1923 and before 1976) was revived and the term then became 95 years from publication. However, if during the period that the works were in the public domain in the USA someone there had republished the books they would not retrospectively become liable for damages etc. Hopefully this did not occur in the case of L's books.

The USCO maintains extensive records of old registrations and many are available to search online, so it might be worth checking. Even if the registrations for the relevant dates are not online, you can ask for a manual search to be done. Finding the registration details might throw some light on the matter of reversion.

And lastly, returning to UK copyright law, the business about 50 years after the death of an author comes about because prior to 1995 that was the rule here. But since L died in 1958, the old 50 year rule meant that her works were still in copyright in 1995 and so became subject to the new lifetime + 70 years term.

I hope things go well for your mother's operation.


*Strictly speaking, it was not the actual publication, ie books hitting the bookshops, that had to be within 30 days, but a deposit copy of the book and registration had to be accepted by the US Copyright Office within that period.

To AndyJ, if you're willing to continue ...

So, forgive my confusion / slowness. If I followed what you've said in your posts correctly ...

- if we decide to go ahead without checking that we don't need to seek reversions, or actually obtaining them, my mother may be liable because the publisher would make sure the contract and insurance protected it against such things;
- the books WILL all require reversion;
- However, 'laches' may protect us from the original publishers.

Am I right?

I have used the USCO search online and found one of the two books being published in 1937 by Grosset and Dunlap, since taken over by Penguin.

I couldn't find the other book in the USCO listings - even being clever with site-specific Google searches and other devious means online (I'm a librarian, so I'm used to having to do this sometimes ). Initially, further searches on the Library of Congress catalog (a legal deposit library, so worth a try) and elsewhere didn't turn up anything. Which made me think that the 2nd one wasn't published in the US. But then a catalog we use at work shows that the National Library of Wales has a copy of that 2nd US one, published in what it terms as [1941], and also by G & D.

The two UK copies seem to have been published in 1936 and 1937, both by the UK version of the publisher which wishes to republish both books now (not that that's helped gain reversions!).

Lastly, I have noticed 1) in one of the emails from the publisher seeking to republish, that they're hoping for publication in the autumn; and 2) a reference on a book sales website (of the Amazon variety) to a kindle version of one of the titles with a projected autumn 2015 publication date! Does this mean that if my mother pulled out of the whole project now (because of the solicitor's fees / not wanting to risk going ahead without seeking advice), that she could be in breach of any kind of verbal contract for having got this far and pulled out? I.e. my mother has suggested by continuing a lengthy email corres. with them that she has been willing to go ahead.

Any further thoughts welcome. I think we'll have to decide whether to go to a solicitor before Friday's op ...

Thanks,

H

Hi Henry,
Well done with searching out the publication details of the US editions. It sounds like your librarian skills came in handy with finding your way through the indexes. Interestingly, the US Copyright Office is part of the Library of Congress and so when a work is registered for copyright purposes, 2 physical copies need to be deposited, presumably one for the Library of Congress proper, and the other to be held as the reference copy in the Copyright Office archive. On that basis I imagine that the LofC catalog mirrors the Copyright Office register, so it is not surprising that you didn't find the second book in either.

By the sound of things, neither of the US editions were published simultaneously in the UK and USA, yet the first at least did get registered so presumably was fully protected by US copyright for at least the first 28 year period. If your have the time and curiosity you could try checking the databases of some of the larger digitizing projects which have been at work in the USA for some time. Obviously you will be aware of the Google Books Library Project, but there is also the HathiTrust and Project Gutenberg and a host of smaller projects, many often specialising in particular subject areas. Their details may expand the information you have already discovered if they have already scanned either of the books.

Jumping back to the first part of you post, I think you have summarised what I said pretty well. I have to emphasise that I can't be sure about the reversions issue as I have no detailed knowledge of the sort of publishing contract that was being used by the UK publishers in the 1930s, and what, if any, reversion clauses it might have contained. We don't even know if there were separate contracts covering the UK and USA, or whether L signed over the world rights to the UK publisher who then sub-licensed the works to Grosset and Dunlap (I assume that D&G were a separate entity and not a subsidiary of the UK publishers). Since the new publisher is, indirectly, a descendant of the original UK publisher, I would have thought they would have a far better chance of tracking down the original UK contracts, if they are that worried about whether or not the copyright has reverted. But since the UK publishers really don't seem that interested, I would take that as a good sign.

On you final point, it's hard to be categoric, but I think that a court would not accept there had been a 'verbal' (actually if the details have been discussed in emails, it won't be 'verbal') contract, if it was clear that a formal written contract was being negotiated. Inevitably there is the need for preliminary negotiations which would normally not bind either side. Should you or your mother have the need to continue corresponding with the US company before you speak with your solicitor, head your emails 'subject to contract' as this makes it clear that you are still in discussion and that nothing is binding at this stage. Also, if the company is unsure and pressing for answers on the reversion issue, then it would seem perverse if they were to claim that your mother has already entered into a contract when it has not yet been established if she even owns the copyright. Clearly the text of the emails will be important in establishing, from what has been said by both sides, whether there has been any form of contract so far, but I doubt it.

Just a quick follow up on my last post.
I am now aware that the Grosset and Dunlap imprint still exists within the Penguin group. There is a specific rights department within Penguin which deals with D&G, and so you could try and see if they have any records relating to the contracts for the US editions of L's books which they published. The contact email is: penguinyr.subrights@us.penguingroup.com

Thanks again very much, Andy J (x 2)!

As it's late , I'll just say that I'm familiar with the email address you gave at the bottom as it's the one I emailed on my mother's behalf and at the suggestion of the re-publishers. But I didn't get a reply from the firm at all, despite later trying another specifically named personal email address within the firm.

The same story applied to the reversion request email addresses I tried at the other publisher!