By Dr Jeremy Fisher, Executive Director at the Australian Society of Authors
Published in ART+law September 2004
As Executive Director of the Australian Society of Authors (ASA), I am often asked what the ASA does for its members. Despite the fact that the ASA sets minimum rates for pay and conditions for authors and illustrators, and publishes books, papers and lists for emerging and established writers, provides a contract advisory service, runs mentorships for new and emerging writers and offers advice about writing, copyright and publishing, its activities on behalf of individual members are not always visible.
The important fact is that the ASA continues to strive to develop its members’ professionalism and knowledge of publishing practices. We offer a number of resources and services to assist members in more fully understanding the ways and means by which they are entitled to benefit from their intellectual property. The ASA will also intervene on behalf of its members when these intellectual property rights are threatened.
The ASA is regularly contacted by members who have come into conflict with publishers about their rights. Unfortunately, it is sometimes unclear whether the dispute has arisen because the publisher is misinformed or is acting deliberately to undermine the authors’ rights. Either way it is important for the author to fully understand their legal position.
One recent example involved a major, multinational publisher and payments from Copyright Agency Ltd (CAL). The book in question was published in 1991.
The ASA member, an illustrator, had been legitimately claiming CAL payments for the copying of her illustrations in the book for a number of years. She was entitled to receive 100% of the CAL payments as she had not signed an agreement with the publisher dealing with the reprographic rights in her work. In fact, she had correspondence from the publisher seeking her permission for use of her illustrations by a third party, an acknowledgement by the publisher that copyright in the illustrations remained with the ASA member.
The matter was complicated by the fact that the current publisher had bought the original publisher in the mid-1990s and didn’t even have the contact details for the ASA member. The situation arose after CAL, early in 2004, sent all of its publisher-members lists of author-members it had paid for copying of the publishers’ works. The accompanying letter from CAL stated that:
“The amounts shown in the schedule were allocated and subsequently paid to the authors in accordance with CAL’s Distribution Rules. Before the payments were made the authors (or their agents) signed a Claim Form stating they were entitled to claim the money. They also agreed to: review any contracts to determine whether any other person was entitled to a share of the payment; and to distribute that share within 60 days of receiving payment”.
The ASA complained to CAL about this practice because it felt the information CAL supplied was private, especially when CAL members had warranted they were entitled to the money. In neither the information sent to the ASA nor the instance detailed below was there any indication a CAL author member had claimed money contrary to the warranty on the Claim Form.
Nevertheless, the publisher in question took the information it received from CAL and used it to send a first letter of demand to the ASA member via CAL, which then mailed it on to the ASA member.
Thanks to the work of the ASA in educating its members as to their rights, the ASA member was well briefed on copyright and knew that she continued to control the reprographic rights to the works she had produced for the publishers on a for-payment basis. As stated previously, the works were not covered by a written agreement that licensed any further use. However, in a third letter sent to the ASA member, who had continued to assert her copyright ownership, the publisher claimed that “the illustrations, and all the intellectual property, including copyright, associated with” them had been sold to the publisher for a fee paid to the ASA member.
The publisher did not produce any evidence of this assertion and actually admitted it could not produce any written agreement where this was explicitly stated. Instead, they asked the ASA member to provide evidence of such an agreement. The ASA member of course stated no such agreement existed or had ever existed. The publisher seemed to be relying on the fact that the publication’s imprint page contained a notice saying the publisher was the copyright owner. However, despite this information being printed on the imprint page, the publisher was not the owner of all the material within that edition. Still, the publisher erroneously continued to claim it had copyright in the illustrator’s works. The publisher then sought advice on the matter from its “commercial lawyers”.
In her friendly reply to the publisher’s second letter, the ASA member sent the publisher a copy of a letter, written in 1991, from the then commissioning editor, which clearly stated that the original publisher was of the view that the illustrator was the copyright owner of the works in question. The letter, to a third party, states that the ASA member “agrees in principle to [the third party’s] request to reproduce the illustrations” and further states “in order to protect both our commercial interests, those of the illustrator and yours, we must ask that you do not make copies of your work freely available to interested parties”. In this letter, the ASA member also made reference to Australian copyright law and the fact that she had never assigned the copyright in her illustrations to the publisher.
The publisher’s lawyers then wrote to the ASA member. They said that, “short of evidence to the contrary” they had advised the publisher it was entitled to the CAL royalties in respect to the ASA member’s illustrations because:
…even without a written assignment of copyright the publisher had “an equitable right to an assignment of copyright (including the right of mechanical reproduction)” since the publisher had:
- commissioned the work
- purchased the work
- paid a one-off fee for the work
- made no provision for the ASA member to share in revenue from the publication
- taken on the commercial risk of publication for its sole benefit.
The lawyers further argued that “if there was no legal or equitable assignment” their client clearly had a licence to publish the works and was entitled to all revenue from the publications, whether by way of sales revenue or photocopying revenue in lieu of sales because it had paid a fee to the ASA member.
Additionally they claimed that reproduction rights vested in their client either by way of assignment (whether legal or equitable) or as part of the rights (expressed or implied) licensed to their client. To this effect it was claimed, “as a matter of fairness and equity”, CAL royalties were effectively in substitution of sales of the publication.
The lawyers demanded that the ASA member pay the entire CAL royalties to their client. Fortunately, the ASA member recognised that the lawyers’ argument was flawed and contacted the ASA for advice and assistance. The ASA advised the lawyers that the position they had taken was incorrect and that the publisher had no claim to the CAL royalties.
The ASA was perturbed at the lack of copyright knowledge displayed by the publisher and the lawyers they had engaged. Even more concerning was the willingness of the publisher to take an aggressive stance based on this lack of knowledge. Whilst the ASA member in this case was well aware of her rights, the publisher’s actions affected her state of mind and caused her extreme distress.
It may well be that the publisher and its lawyers used similar letters and tactics against others of whom it had received notice from CAL that they had received payments. These people might have paid the publisher, when in fact they had no reason to.
For creators, the ability of a representative organisation like the ASA to stand up to business tactics, which skate over their fundamental rights, is important and valuable. Whilst the ASA’s representation in this instance was on an individual basis, the Society was standing up for the rights of all creators and that’s what we proudly continue to do, even if it is not always clearly visible.
