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Tortured Language – Discerning Ebook Rights in Ancient Publishing Contracts

7 February 2012

ancient Mixtec writing via Wikimedia, public domain

Big Publishing and not-so-Big-Publishing are desperately seeking ebook rights in the grant language of old publishing contracts.

Passive Guy has blogged several times about the HarperCollins vs. Open Road Media lawsuit. To refresh your recollection, 93-year-old author Jean Craighead George signed a contract with Open Road Media to publish Julie of the Wolves and (probably) several other of her classic children’s books as ebooks.

HC, having sold over 3.8 million copies of Julie, hadn’t issued an ebook, perhaps because they worried they didn’t have the right to do so or perhaps it was just sloth.

Realizing that suing a beloved 93-year-old woman would be a PR disaster, HC sued Open Road instead. The result was the same, however: Ms. George’s classic won’t be available as an ebook any time soon. She’ll spend her declining years in the middle of a nasty lawsuit. Indeed, given the pace of New York litigation, Ms. George’s chances of living to see the end of the suit and probable appeal are slim.

You can consult various posts for more details, but HC’s basis for its claim to ebooks is that its 1971 publishing contract gave it the right to publish Julie “in book form.”

Were ebooks mentioned in the contract? No. Were computers or computer files mentioned in the contract? Almost certainly not or HC would have mentioned them in its complaint.

Although HC’s complaint made a stupid and strange lunge at ebooks with a reference to the beginning of The Gutenberg Project (which started in an Illinois computer lab after the contract was executed), when Ms. George signed her contract, no ebooks had been published anywhere on the earth. Likely none existed.

What was the “form” of a book in 1971?

Hard cover and paperback will be all that is mentioned in the primary rights section of the contract. Subsidiary rights may include audio, movies and television, but the reason they’re called subsidiary rights is that they really aren’t about books, but rather other products people can make based upon the book or portions thereof.

The first definitional problem HC has is that, while physical books have a form, ebooks have no form. They cannot be perceived with any of the five human senses in their native format. They have no height, width, depth or weight. We may talk about them as bits, bytes, ones and zeros, but those are really metaphors for indiscernible electronic charges.

Setting aside what people thought in 1971, electronic charges don’t have a form today. The only way an electronic book file can be perceived by sight is by loading it into a compatible ereader, at which time, those electronic charges in the ebook file are transformed into something entirely different, images in the shape of letters on a screen. Literally, what you see on the screen is not the ebook file prepared by the publisher, but the results of the ebook file interacting with the hardware and software of the ereader.

In a sense, the words of an ebook on a screen are an instant translation of the electronic charges made by the ereader. If you put the ebook file into a different type of ereader, whatever translation occurs will probably not be readable. (FYI, PG is not contending that translation rights include ebook rights.)

A fundamental legal question involved in construing a contract is what the parties intended at the time the contract was made. The intent must be manifest in some form in the written agreement. A secret intent by one party that the word tomato also includes avocado won’t bring avocados into the contract.

The classic formulation is that there must be a “meeting of the minds” of the contracting parties or else there isn’t a contract or the contract is limited to only those subjects for which the minds met.

A big problem HC has with its case is even showing an intent by both parties to include what we recognize as ebooks today into the 1971 contract in the absence of any language that points to an ebook.

In more recent contracts, the same problem arises. Here’s some more modern grant language extracted from PG’s Contract Collection:

[The publisher has the right to] Information storage, retrieval and electronic transmission systems use, including but not limited to  CD-ROM storage systems and other computer driven media, whether now known or hereafter discovered.

This sounds more impressive, but why doesn’t it mention ebooks or electronic books? Does it include display on an ereader or a computer screen? Does it include the right to license Amazon and Pubit to make and sell duplicate copies of ebook files or just the right of the publisher to make those copies? Doesn’t this language sound more like a computerized type-setting system than anything resembling an ebook?

PG also has problems with the “hereafter discovered” language because it implies a meeting of the minds concerning something neither party knows about when they sign the contract.

The other problem PG has with lots of these computer thingies grant clauses is they were drafted after ebooks were known and in use and were called ebooks or something similar. If I’m an author and people are using ebooks and ereading systems at the time the contract is signed and the contract doesn’t mention ebooks or describe something that sounds a lot like what people are using, how can the publisher come back later and say we agreed the contract covered ebooks?

As mentioned earlier, HC helpfully contended that the earliest origins of the ebook began in 1971 with The Gutenberg Project. If HC intended to include ebooks in its 1971 contract, why didn’t it describe something that looked like the Gutenberg Project? The absence of such a description implies there was no intent to include anything like GP in the grant of rights.

In 1980, Tim Berners-Lee proposed and prototyped ENQUIRE, a system for physics researchers to create, share and read electronic documents. In 1989, Berners-Lee wrote a memo proposing an Internet-based hypertext system now known as the World-Wide Web. He released the first specification for HTML and wrote browser and server software for HTML documents (now called web pages) in the last part of 1990. HTML was released to the general public as a means of formatting electronic documents in 1991.

A little internet research tells PG that people were talking about ebooks in 1985, when an article entitled “Reading and Writing the Electronic Book” was published in IEEE Computer Magazine.

In 1990, a company called Electronic Book Technologies, Incorporated, was founded to develop and sell DynaText, an SGML (Standard Generalized Markup Language) electronic document and book publishing system.

SoftBook Press, Inc. was founded in 1996 to develop the first stand-alone ebook reader. By 1996, the World Wide Web was well-established as a means of distributing and reading written materials via desktop and laptop computers.

Yet, if you look at grant language from publishing contracts of this era, you will seldom, if ever, see any mention of an electronic book or internet-based document or anything remotely resembling the technology of that day. If the parties intend electronic books to be included in a contract, wouldn’t they mention electronic books?

But Wait! There’s More!

In 1973, Mead Data Central introduced a computerized legal research service called Lexis that included the full text of the Ohio and New York codes and cases, the U.S. code, and selected federal cases. These were electronic versions of rows and rows of lawbooks – ebooks.

In 1974, Lexis offered attorneys the ability to search through and view these ebooks in their offices via a private telecommunications network. Most large New York law firms signed up.

What elements of the current ebook were present in the 1970’s Lexis system?

  • Electronic books
  • Obtained from a central repository
  • Via a communications network
  • Readable on a screen instead of on paper

Now, you wouldn’t want to spend the evening reading a novel with an early Lexis terminal balanced on your stomach, but all the major components of today’s ebook infrastructure were in place. During the same period, Lexis gained a large competitor, Westlaw, that did the same thing.

Lexis UBIQ II Terminal, circa 1979

In 1981, the IBM PC was released and not long after that, the terminals were replaced by PCs running Lexis and Westlaw software. Beginning in the 80’s, every law school obtained Lexis and/or Westlaw access and law students were trained in computerized legal research. During this time, it was impossible to read a bar journal without seeing a Lexis or Westlaw ad.

Q. Who writes publishing contracts for New York publishers?

A. New York lawyers, the same people who began to see Lexis terminals in the 70’s and receive law school training on Lexis and Westlaw use in the 80’s.

So the lawyers writing publishing agreements in the 80’s probably had Lexis or Westlaw terminals in their offices. If they were of a certain age and didn’t personally use them, these lawyers were familiar with their capabilities and had associates or law librarians perform Lexis research on various legal issues. By the 90’s virtually every attorney in a large law office would have had access to Lexis or Westlaw on their personal computer.

PG has not read all versions of publishing contracts from Big Six publishers created in the 80’s and 90’s, but he’s never seen anything resembling a description of the Lexis and Westlaw ebook systems of that era in any publishing agreement.

Absent any contractual mention of ebooks or electronic books or a reasonably detailed description of an ebook reading and distribution system resembling one the lawyers knew intimately, the only reasonable conclusion is there was no intent to include ebooks in publishing agreements of that era.

Just sayin’

Big Publishing, Contracts, Legal Stuff, Passive Guy

35 Comments to “Tortured Language – Discerning Ebook Rights in Ancient Publishing Contracts”

  1. PG,

    Was there ever a response filed to the complaint? I’m curious about Open Road’s position on some of HC’s more opaque assertions.

    • William – There was an agreement to allow Open Road additional time to file an answer. It should appear in another week or so.

  2. That Lexis terminal is all kinds of awesome. And in red! Brings back memories of computers of the ’80s. Not that I would remember that first hand. Oh no.

    • They seemed cool at the time, Rebecca, even at 300 baud when you could read faster than the characters appeared on the screen.

      • 300 baud! I remember that! Wait, no I don’t. Honest. ;)

        • It was . . . relaxed.

        • I remember 300 baud, kinda, but I think I was up to… 1200 baud? Then my now-spouse/then-SO got me a 2400 baud modem. :)

          Ah, the dulcet singing of the modems!

          • As I recall, it went from 300 to 1200 to 2400 to 28.8 something.

            I do remember the moose-mating call of the modem.

            • Even before 300 baud, there was 110 baud. And acoustic coupler modems. And teletype.

            • In between 2400 and 28.8 there was 9600 and 14,400 for a while; I think I had one of each in my relentless pursuit of faster communications.

              Ah, acoustic couplers, Sherri… when there was only one size phone, and it filled the space (on the outside) between your mouth and your ear! Such a comfortable thing to hold in your hand. Good enough when a machine couldn’t type faster than ten characters per second anyway.

              • You’re right, Pholy. I can’t for the life of me remember which speeds I owned, not that it makes any difference.

  3. Great summary of the history involved. It doesn’t surprise me that the publishing lawyers never jumped on the lexis/westlaw angle though. To many, if not most people, computers are magic boxes that do magic things. I doubt any of those lawyers even realized that “this is a book I’m getting information from” and of the few who did, they would have had to explain it to their publishing clients to get that information into the contract. It was just a magic box. And if they had a legal aide or a librarian do it, they were even less aware of what was really going on.

    It’s been my experience that many people, even highly intelligent people, don’t bother to learn the how of something as long as it does what they expect it to.

    I can’t entirely blame them, either. The thought that a book can be anything other than physical paper would have been a pretty tough sell to many people just a decade ago. You could tell them about project gutenberg until you were blue in the face and it wouldn’t matter. That was just some internet thing. It wasn’t real until it was printed on paper.

    The idea that you could monetize it and sell it? And people would actually buy it? It might have been out there but it wasn’t important because no one could figure out a way to make money from it. And if you can’t make money from it what’s the point in paying extra for useless rights?

    The fact that they’re trying to grab them retroactively just makes them scum.

    • Apparently, for some people, it’s a short jump from revising a manuscript to rewriting history, Jean.

      • That history of copyright you pointed us at a day ago had an interesting point: Rights don’t get created until enough people feel they have been wronged. So nobody would think of ebook rights until after they decided they were getting ripped off in some way, after they saw someone else making money instead of themselves.
        So then they decided to retroactively create the right they hadn’t thought of when they wrote the contract.

  4. Be careful about opining in public too much, PG. You might get called to testify in the case as an expert witness. :P

    Wouldn’t that be a hoot?

    • Attorneys are notorious for making bad witnesses. When I was litigating, I represented a couple of attorneys and, despite my warnings, they were terrible on the stand.

      I, on the other hand, would be the one exception. :)

    • PG would love that–a license to print money.

  5. Before you get to deciding whether there was a meeting of the minds, don’t you first have to demonstrate that the term “book form” is ambiguous? Wouldn’t I argue that at the time of the making, “book form” was unambiguous under any reasonable reading?

    • You’re correct, Pete.

      HC says book form includes ebooks, which didn’t exist when the contract was signed. My take is the term was unambiguous and only referred to printed books when the contract was signed.

  6. Then there’s this killer – if it IS deemed ambiguous, the ambiguity is read against the Big Pub lawyer – the one who’s doing the legal research on the computer and knows about electronic IP.

  7. Isn’t it too bad that the word “book” is in “ebook”?

    Here’s my advice for Open Road Media: Release Ms. George from her contract.

    Now here’s my advice for Ms. George, to be acted upon following her release from the contract: Self-publish your book(s).

    And here’s my advice for Harper Collins: Go ahead, sue a 93-year-old woman. I dare you. Also be sure to make it a jury trial. Lawyers may make lousy witnesses, but I’ll bet Ms. George would be an entirely sympathetic one.

    City governments are always passing legislation on an “emergency” basis when there’s no emergency. It’d be nice if the courts would grant emergency status to lawsuits involving people whose life-expectancy is less than the length of time the case would take to reach a courtroom under usual circumstances.

  8. I graduated from law school in 1981, and we were just at the very beginning of using computers and learning about Westlaw for research. Then I got a job at the USPTO (Patent & Trademark Office, for those who don’t know that acronym) and we were in the thick of exciting new computer search plans… which was kind of like The Jetsons for trademark lawyers.

    It is quite amazing to think how much the world has changed since then. So glad to have gone from law to writing and publishing in my own journey. Poorer but much happier!

    Patrice Fitzgerald, author of RUNNING

  9. [...] Passive Guy (aka contract lawyer David Vandagriff) has written a fairly lengthy post looking at the question of whether e-book rights are covered in pre-e-book contracts. Passive Guy writes: A fundamental legal question involved in construing a contract is what the [...]

  10. [...] As PV puts it: Were ebooks mentioned in the contract? No. Were computers or computer files mentioned in the contract? Almost certainly not or HC [Harper Collins --ed.] would have mentioned them in its complaint. [...]

  11. [...] And then there was the Tortured Language – Discerning Ebook Rights in Ancient Publishing Contracts. [...]

  12. [...] suit to stop ebook publication of beloved children’s book, Julie of the Wolves, most recently here.Yesterday, PG received an email to assure him that Open Road is still publishing Julie. You can [...]

  13. [...] for ways to push the lightning back into the sky, whether by censoring the Internet, suing content creators, or shaming people who buy used games. To their frustration, none of it’s working. Very few [...]

  14. [...] Case May Redraw Battle Lines Over E-Books 13 February 2012 Goto comments Leave a commentMore on the HarperCollins vs. Open Road suit from Law360:HarperCollins lodged its suit in New York federal court in December, alleging that Open [...]

  15. Why is Ms. George not an indispensable party, since the relief requested can’t necessarily affects her rights?

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