From Courthouse News:
Overlook Press sued the grandchildren of Russian author Mikhail Bulgakov, claiming an eBook translation of his masterpiece “The Master and Margarita” will not violate copyright, as Overlook owns rights to a print translation.
. . . .
Overlook seeks declaration of non-infringement and wants the court to determine a fair royalty rate for an ebook version.
It acknowledges that Bulgakov’s grandchildren own rights to the underlying copyright. It says they have threatened litigation, claiming that the U.S. publisher “has a right to publish the translation in print form, but they contend that an electronic book would infringe their copyright in the work.”
. . . .
“Overlook has the sole and exclusive right to publish the translation and contends that this right extends to publishing the translation as an ebook, as it now intends to do,” the complaint states. “Overlook now seeks a declaratory judgment that its publication of the translation in electronic form does not infringe any copyright interest of the Shilovskiys.
“Although the parties have long been in agreement over the reasonable compensation to defendants for plaintiff’s publication of the translation in print form, they have been unable to agree on any compensation for its publication in electronic form. Overlook now seeks a judicial determination of the appropriate compensation for publication of the ebook, as provided in 17 U.S.C. § 104A(d)(3)(B).”
. . . .
Bulgakov, 1891-1940, had some plays produced, but virtually all of his fiction was banned from publication under Josef Stalin.
Link to the rest at Courthouse News
From the description, at one level, this appears to be a suit by a publisher that doesn’t have a clear right to publish a book in ebook form that attempts to grab that right. PG has discussed some of these cases here, here, here and here plus a bunch of other places. Click here for what is a fairly complete collection of Passive Voice posts on the topic.
The twist in this case involves what are described as restored copyrights. PG will supply a link to a more complete discussion of this topic at the bottom of the post, but here’s the Cliff’s Notes version:
1. In the various and sundry changes to copyright law involving both US legislation and ratification of international copyright treaties, unintended consequences have run rampant.
2. Under the 1909 Copyright Act, the term of a copyright was 28 years. The owner of a copyright could renew the copyright for an additional 28 years by filing appropriate documents at the end of the first 28-year term. Once copyright expired, a work was in the public domain and anyone could publish it.
3. No major changes to US copyright terms occurred between 1909 and 1976. In 1976, the renewal term of a copyright was increased to 47 years. In 1978, the renewal term was increased again to 67 years.
4. If a work was originally copyrighted after 1922 and had been renewed prior to 1976, a work automatically received the longer copyright term of later copyright acts.
5. Pursuant to an international treaty, The Uruguay Round Agreements Act, passed in 1992, included Section 104A, which provides for the automatic restoration of copyright in certain foreign works that have entered the public domain in the United States. So, a book that had entered the public domain all of a sudden received copyright protection again. These are sometimes described as “restored copyrights.” See Copyright Renewal, Copyright Restoration, and the Difficulty of Determining Copyright Status for a discussion of many of the problems this provision has caused.
One of the principal problems publishers face when when they try to grab ebook rights under an older publishing agreement made during the days when print ruled is that there is no mention in the original publishing agreement of any ebook royalties.
Publishing agreements may include some subsidiary rights clauses that include licensing rights which might be stretched to cover ebook licensing. However, publishers don’t like to use those because subsidiary rights licensing provisions often provide royalties to the author of 50%-80% and publishers definitely don’t want to pay authors that much for ebooks.
The interesting twist in the Bulgakov case is that the publisher claims that, because the book is a foreign work with restored copyright, a seldom-used clause, 17 U.S.C. § 104A(d)(3)(B), can be used to create an ebook royalty where (presumably) none existed in the original publishing agreement.
Since PG knows that everyone is lusting to read 17 U.S.C. § 104A(d)(3)(B), here it is:
(B) In the absence of an agreement between the parties, the amount of such compensation shall be determined by an action in United States district court, and shall reflect any harm to the actual or potential market for or value of the restored work from the reliance party’s continued exploitation of the work, as well as compensation for the relative contributions of expression of the author of the restored work and the reliance party to the derivative work.
This case is an outlier because of the copyright restoration angle, but the issue of whether the publisher or the author hold ebook rights under older publishing contracts has already sprung up in several places and will continue to do so for many years to come. The simple fact is that many publishers did a terrible job of trying to cover ebook rights in their publishing agreements and are publishing ebooks where their right to do so is highly questionable.