[GOAL] Re: A reply to Professor Carroll

Sat Feb 8 16:32:12 GMT 2014

It would be understandable, yet a pity if authorities like Charles Oppenheim and Michael Carroll were to stop adding to this debate, since we learn a lot from their exchanges. Tant pis.

Charles uses the word 'pragmatics' in his response. Pragmatism is an important notion here. I think that legally, publishers would indeed have the right to demand that theses that are published and for which the author has transferred copyright to a publisher and the publisher hasn't explicitly allowed that the informal copy be made available on an open web site, be taken down. So yes, there is a risk of infringement action. Given that this sort of copyright infringement by authors is mostly a civil and not a criminal matter (as long as it is not done for purposes of commercial advantage or private financial gain), only the copyright holder can take legal action. Correct me please if I'm wrong. That means that it is up to the publisher to take that legal action. But publishers are pragmatic. Though they could legally require that informal copies of the theses and journal articles that they published be removed from public sites, they know that they will just harvest opprobrium and extremely negative PR, and gain next to nothing. They are not stupid. So they (at least some of them) just require the officially published version ('F' in Charles' lexicon) to be taken down. It may well be that from this 'pragma-as-opposed-to-dogma' attitude on the part of the publishers the notion arose that earlier, informal copies ('D' in Charles' lexicon) would not be covered by copyright.

The conclusion that I drew quite some time ago didn't have to be changed as a result of these recent discussions, I feel. Namely that in order to sustain a robust system of scholarly (particularly journal) publishing that's fit for purpose, monetising copyright is the wrong method.

Jan Velterop

On 8 Feb 2014, at 14:05, CHARLES OPPENHEIM <c.oppenheim at btinternet.com> wrote:

> Professor Carroll has withdrawn his misinterpretation of what I said. I thank him for that.
> 
> He argues that if, say, 50% of words in a Final Article (F)  also appear in a draft (D), then assignment has been given in D as well to the publisher.  So how come so many theses are available in OA repositories when I suspect in many cases, at least 50% of the words in an article based on a thesis also appear in the thesis?  This says institutions that post theses into a repository are infringing the publisher's rights. Does Prof Carroll agree that such theses should be withdrawn because of the risk of an infringement action?  
> 
> We differ to a degree only. In my view, if the peer reviewers request only trivial changes ("The correct year for Smith's reference in 2005, not 2006"), then D is sufficiently similar to F to not enjoy separate copyright owned by the author.  But if it has major changes ("you have completely missed Jones' major work on the topic and need to refer to it at length in your introduction", "you must explain how you chose the sample", "you must justify in rigorous way why you think the correlation means a causal relationship - or else withdraw that statement", then F is sufficiently different from D to justify my position (and indeed, explains why some peer reviewers are arguing that inn such cases they should be identified as joint authors of F, but of course they wouldn't dream of arguing that they are joint authors of D).
> 
> But what really disappoints me about this debate is the failure to address the pragmatics, which is what I am primarily interested in:
> 
> 1.  No publisher has ever claimed that the Harnad-Oppenheim (HO) solution is illegal.  Instead, they have (rightly) said it is impractical - which, by implication, means they accept it may well be legal. Publishers have access to some pretty good IP lawyers…..
> 
> 2.  I don't recommend the HO solution for the reasons publishers gave.  I regard the solution as a desperate poor quality last resort.  There are much better ways to ensure OA thrives in the scholarly environment. 
> 
> 3. I hope  Prof Carroll agrees with me that authors are foolish to assign (or sign an exclusive licence) copyright to publishers and that they should adopt one of the tactics I mentioned, or Mike Taylor's idea of putting F into an OA repository and then telling the publisher they cannot sign the assignment/exclusive licence because F is already out there.
> 
> Like Prof Carroll, I don't expect to add further this debate.
> 
> Professor Charles Oppenheim
> 
> From: Michael Carroll <mcarroll at wcl.american.edu>
> To: Global Open Access List (Successor of AmSci) <goal at eprints.org> 
> Cc: charlesoppenheim <c.oppenheim at btinternet.com> 
> Sent: Friday, 7 February 2014, 21:42
> Subject: Re: [GOAL] A reply to Professor Carroll
> 
> I'm afraid there's an option (d), which is that I did read Professor Oppenheim's post, and I think it misstates the legal situation in both the United States and the United Kingdom when an author assigns the exclusive rights under copyright in the final version of an article.  Specifically, the statement that an assignment of rights in the final version of an article leaves the author with rights in the draft, i.e., "This crucial difference means I am free to do anything I like with D, including posting it on an OA repository." I am not aware of any legal authority that would support this understanding of the situation.
> 
> I take no pleasure in pointing this out, since Professor Oppenheim has done a lot of good work on behalf of OA.  But, it's not helpful to understate the legal consequences of a copyright assignment or the grant of an exclusive license.  I realize that Professor Oppenheim did not say that a publisher could do as I suggest, and I apologize for using a common form of argument among attorneys to point out the consequences of one's statement of the law.  Let me rephrase to say, if Professor Oppenheim's statement of the law were correct . . . .
> 
> With respect to Kevin Smith's and Dave Hansen's posts, I think we're all roughly in agreement, but we're deeper in the weeds than we need to be. Dave, this really is about the law and not about contract interpretation because we are talking about the legal consequences of a standard transfer of the exclusive right of reproduction, which is ubiquitous in publication agreements that require either an assignment or an exclusive license.  See, for example, the IEEE agreement as an example. http://www.ieee.org/documents/ieeecopyrightform.pdf
> 
> But, let's assume for a moment that the publication agreement assigns only the exclusive rights in the final version of the article.  The fundamental misunderstanding is about what the author has given up.  The author initially owns the exclusive rights under copyright in the work of authorship, which is the author's original expression contained in the final article.  This means the author has the legal authority to exclude others from making exact copies or copies of the work that are substantially similar to the original.  When the author transfers this exclusive right to the publisher, the author now has the legal status of any other member of the public with respect to the final version of the article.  [Let's leave aside for the moment any provisions of the contract that may give the author rights to post a draft online.]  Assuming that fair use, fair dealing or other user rights do not apply,  posting a substantially similar version of the final article online would infringe the publisher's right of reproduction regardless of whether the person posting is the author or any other member of the public and whether the substantially similar version is a prior draft or a variation created after publication.  That's what it means to give up your rights under copyright, and that's why the record label was able to make a claim against John Fogerty (referenced in my 2006 post) for allegedly infringing the rights in a song that he had previously written but to which he no longer owned the copyright.
> 
> It is simply not the law that an author who has transferred the exclusive rights under copyright in the final version of an article still owns some residual rights in a prior draft that would allow the author to post it online if the draft and the final version are substantially similar to each other.  And, the courts have defined the zone of substantial similarity to be fairly broad.  Even if only half of the draft corresponds word-for-word with the final version, that would be substantially similar and could not be posted.
> 
> I imagine this thread will continue, but I don't expect to contribute further.
> 
> Best,
> Mike
> 
> Michael W. Carroll
> Professor of Law and Director,
> Program on Information Justice and Intellectual Property
> American University Washington College of Law
> 4801 Massachusetts Avenue, NW
> Washington, D.C. 20016
> Office: 202.274.4047
> 
> Faculty page: http://www.wcl.american.edu/faculty/mcarroll/
> Blog: http://carrollogos.blogspot.com
> Creative Commons: http://creativecommons.org
> Public Library of Science: http://www.plos.org
> 
> From: CHARLES OPPENHEIM <c.oppenheim at btinternet.com>
> Reply-To: "Global Open Access List (Successor of AmSci)" <goal at eprints.org>
> Date: Thursday, February 6, 2014 4:24 AM
> To: "goal at eprints.org" <goal at eprints.org>
> Cc: charlesoppenheim <c.oppenheim at btinternet.com>
> Subject: [GOAL] A reply to Professor Carroll
> 
> Professor Carroll has completely misrepresented me. As I made clear in my point 1, no-one can adapt or amend F without the publisher's permission. His misrepresentation must have been as a result of one of three things: (a) Prof Carroll never read my piece; (b) he read it and deliberately misconstrued what I wrote; or (c) he read it and did not understand what I wrote. I was totally clear that the author has rights to D, but cannot do anything with F. I now expect Prof Carroll to apologise for misrepresenting me and to explain which of (a), (b) or (c) was the reason. 
> 
> He also notes the UK IPO statement that infringement covers copying all or a substantial part of a copyright work. I agree, but such copying has to be AFTER F is published. One cannot copy something before it is made! So he is again referring to my case 1, and misrepresenting it.
> 
> Finally, Prof Caroll claims that most copyright assignments refer to assignment of the article AND MORE. Not in my experience as an author of hundreds of articles, and being in charge of assignments and licences in the 12 years I worked for scholarly publishers. So I further invite Prof Carroll to give me actual examples of such assignment wording. I asked Kevin, but he did not give an adequate reply.
> 
> (Professor Carroll wrote:
> 
> On Professor Oppenheim's view, the copyright owner's exclusive right of reproduction would be limited to controlling only verbatim copies. If that were true, I would be free to republish the entire corpus of Elsevier publications if I make only small changes to the articles similar to the differences between a final draft and the final publication. Needless to say, if this were the law, some clever publisher would have done just as I suggest. But, this is not the law in the US or in the UK.
> 
> So even if the publisher were to be assigned rights only in the final version of an article  and most publication agreements are not this limited  the scope of those rights would preclude posting of substantially similar
> versions whether those versions were created before or after the published version is produced. (US law uses the term "substantially similar" whereas UK law asks whether the copyright work has been copied "in substantial part"
> but it effectively means the same thing in this context.  See http://www.ipo.gov.uk/types/copy/c-about/c-economic.htm)
> 
>  
> Professor Charles Oppenheim
> _______________________________________________ GOAL mailing list GOAL at eprints.org http://mailman.ecs.soton.ac.uk/mailman/listinfo/goal
> 
> 
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