As the Wall Street Journal put it the other day,
Random House has sent a letter to literary agents claiming the digital rights to books it published before the emergence of a thriving electronic-book marketplace.
The New York Times also covered this story. The issue is ownership of rights to publish backlist titles as e-books, where the original publication agreements didn’t explicitly address e-book rights. Instead, those agreements granted rights to publishers to produce the works “‘in book form’ or ‘in any and all editions.’ “ If that language covers e-books, then the original print publishers also own e-book rights; if not, then e-book rights remain with the authors or their heirs.
So the question is – in part – what is a book? Is an e-book a “book” or an “edition”?
And the question is – in part – what did the parties to these publication agreements mean by the phrases “in book form” and “in any and all editions”? We’ve been down that second road before: A few years ago, Random House tussled with Rosetta Books over precisely this question (the contractual question, not the metaphysical question), and in preliminary skirmishes in the District Court and the Second Circuit, Rosetta Books came out a winner – before the parties settled.
The e-book conundrum is the latest in a long series of lawsuits that are often classified as posing “new use” issues: What happens to rights to a work that has been licensed, where new technologies emerge after the license is agreed to and exploitation of the work by those new technologies might or might not be covered by the existing license? Courts have taken a number of different approaches to analyzing these problems, none of which is completely “satisfying,” as law professors sometimes say, and all of which touch either explicitly or implicitly on the metaphysical question. Under the guise of asking what should be a contract question — what did the parties mean when they agreed to the deal — courts inevitably and probably necessarily confront some ancient philosophy (i.e., Plato): What is a book? What is a motion picture (Boosey & Hawkes, Bartsch)? What is television (Cohen)? What is a newspaper (Tasini)?
I suspect that what is going on here is ongoing ambiguity in copyright law over the respective roles of form and format, on the one hand — tangible things that are not protected by copyright law, and the creative or intellectual “work of authorship,” on the other hand — the intangible thing that is defined and governed by copyright law. In a centuries-0ld world that categorized copyrightable things as “maps, charts, and books,” this was not much of a problem. When distinguishing work and tangible object became legally and culturally important, lawyers and courts bought themselves some interesting problems. Distinguishing those two things has never been easy, and it will likely get more difficult as we move further into the digital future.