From: Richard Poynder <[log in to unmask]>
Date: Thu, 6 Feb 2014 09:20:06 +0000

Charles Oppenheim has asked me to forward this response to the message
from Kevin Smith below:

Consider a PhD thesis that gets worked up into an article and is then
submitted to a journal.  Kevin seems to be saying that this precursor
is similar to the final article and so copyright in the thesis is
covered by the assignment.  I suspect he will respond "not so, it is
too different", but that raises the question at what point do Draft
and Final become sufficiently different to enjoy separate copyrights?
In my experience, peer review frequently introduces sufficiently
significant changes to the article for that to apply.

The Wiley assignment is a red herring.  Wiley graciously grants to the
author rights to do something they already can do. Loads of
assignments and licences try that.  I await examples of assignments
which explicitly state that the assignment covers both the article and
precursors to it. In my 12 years responsible for assignments and
licences working for scholarly publishers, my employers never once
considered that they held any rights to precursors. But maybe that has
changed since....

But my real point was that the so-called Harnad-Oppenheim solution is
in practice irrelevant because authors shouldn't be assigning
copyright in articles in the first place, and if they are so foolish
as to do so, why would someone want to read text *before* it has been
peer-reviewed rather than the final improved article? And that is the
very point that scholarly publishers (rightly) made when the
Harnad-Oppenheim solution was first proposed. They didn't say it
wasn't legal.  They said it wasn't practical.

Professor Charles Oppenheim

>>>


From: Kevin Smith <[log in to unmask]>
Date: Wed, 5 Feb 2014 14:33:16 +0000

I had really hoped I could ignore this rather muddled controversy,
mostly due to a lack of time to address it.  But a tweet from Nancy
Sims, of the University of Minnesota, made me realize that my original
post used slightly careless language that may contribute to the
confusion.  So I feel I should set that straight.

I wrote that different versions of an article were derivatives of one
another.  That is probably a defensible position, but Nancy made the
point much clearer -- the different versions are still the same work,
so subject to a single copyright.

Throughout this discussion, the proponents of the position that
copyright is transferred only in a final version really do not make
any legal arguments as such, just an assertion of what they wish were
the situation (I wish it were too).  But here is a legal point -- the
U.S. copyright law makes the difficulty with this position pretty
clearly in section 202 when it states the obvious principle that
copyright is distinct from any particular material object that
embodies the copyrighted work.   So it is simply not true to say that
version A has a copyright and version B has a different copyright.
The copyright is in the expressive content, not in different versions;
if all embody substantially the same expression, they are all the one
work, for copyright purposes, because the copyright protects that
expressive content.  Hence Nancy's perfectly correct remark that the
different versions are the same work, from a copyright perspective.

Part of the point I wanted to make in my original post is that this
notion of versions is, at least in part, an artificial construction
that publishers use to assert control while also giving the appearance
of generosity in their licensing back to authors of very limited
rights to use earlier versions.  The versions are artificially based
on steps in the publication permission process (before submission,
peer-review, submission, publication), not on anything intrinsic to
the work itself that would justify a change in copyright status.  If
we look at how articles are really composed -- usually by composing
one file and then editing it repeatedly, it is easy to see how
artificial, in the sense of unrelated to content, the distinctions
are.  How much time must elapse before a revision is a different
version?  If I do some revisions, then go have a cup of tea before
returning to make other revisions, have I created two different
"versions" entitled to separate copyright protection?  The question is
absurd, of course, and shows how unworkable the idea of different
copyrights in different versions of the same work would be.

It has been said that no publisher makes the claim I am here
suggesting.  But if we look at actual copyright transfer agreements it
is easy to see that they do.  The default policies for Wiley, for
example tell authors that they can archive a pre-print and archive a
post-print, subject to certain conditions, including rules about the
types of repositories that the archiving can take place in and a
limitation to non-commercial reuse.  If an author transfers rights
only in the final version, how can Wiley make restrictions on the use
of these earlier versions?  The better -- indeed the only logical --
interpretation is that the copyright that is transferred covers the
work as a whole, which is the nature of copyright, and that Wiley then
licenses back to authors certain rights to reuse different versions.
Those version rights are based on what Wiley wants to allow and to
hold on to, not on any legal distinction between the versions.
Elsevier's policies are similar -- they allow the preprint to be used
on any website, the post-print to be self-archived on a scholarly
website ONLY if the institution does not have a mandate and with
acknowledgement of the publisher, and do not allow any archiving of
the final version.  Again, all of this is grounded on a claim that a
copyright that is inclusive of the different versions, because they
are the same work, has been transferred to Elsevier.

Let's imagine what would happen if a dispute ever arose over a use of
an earlier version of an article after the copyright had been
transferred.  A court would be asked to determine if the use of the
earlier version was an infringement of the copyright held by the
assignee.  Courts have a standard for making this determination; it is
"substantial similarity."  So if the re-used version of the work was
substantially similar to the work in which the copyright was assigned
-- that language is itself bound up in the misunderstanding I am
trying to refute -- a court would probably find infringement.  This
has been that case in situations where the works were much more
different that two versions of a scholarly article.  George Harrison,
for example, was found to have infringed the copyright in the song
"He's So Fine" when he wrote "My Sweet Lord," even though the court
acknowledged that it was probably a case of unconscious borrowing (see
Bright Tunes Music v. Harrisongs Music, 420 F. Supp. 177, S.D.N.Y.
1976).  And the author of a sequel novel to "Catcher in the Rye" was
held to have infringed copyright in Salinger's novel even though they
told very different stories, due to similarities in characters and
incidents (Salinger v. Colting, 607 F. 3d 68, 2d Cir. 2010).  If these
very different "versions" of the same work were held to be copyright
infringement, how is it possible that two versions of the same
scholarly article could have separate and distinct copyrights?

In many ways I wish it were true that each version had a distinct
copyright, so that transfer of the rights in one version did not
impact reuse of the earlier version.  That situation would make
academic reuse much easier, and it would conform to a basic sense that
most academics have that they still "own" something, even after they
assign the copyright.  But that position is contrary to the very
foundations of copyright law (and not just U.S. law), which vests
rights in the content of expression, not in versions that represent
artificial points in the process of composition or publication.  And
much as this mistaken idea may be attractive, it has dangerous
consequences; it gives authors a false sense that the consequences of
signing a copyright transfer agreement are less draconian than they
really are.  Instead of plying our faculty with these comforting
illusions, we need to help them understand that copyright is a
valuable asset that should not be given away without very careful
thought, precisely because, once it is given away, all reuse of the
expression in the article, regardless of version, is entirely governed
by whatever rights, if any, are licensed back to the author in the
transfer agreement.

Kevin

Kevin L. Smith, M.L.S., J.D.
Director, Copyright and Scholarly Communication
Duke University Libraries
Durham, NC  27708
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