Guest Post: Charles Oppenheim on who owns the rights to scholarly articles

The recent decision by Elsevier to start sending take down notices to sites like Academia.edu, and to individual universities, demanding that they remove self-archived papers from their web sites has sparked a debate about the copyright status of different versions of a scholarly paper.

Last week, the Scholarly Communications Officer at Duke University in the US, Kevin Smith, published a blog post challenging a widely held assumption amongst OA advocates that when scholars transfer copyright in their papers they transfer only the final version of the article. This is not true, Smith argued.

As he put it:

Each version is a revision of the original, and the copyright is the same for all these derivatives.  When copyright is transferred to a publisher, the rights in the entire set of versions, as derivatives of one another, are included in the transfer.  Authors are not allowed to use their post-prints because the rights in that version are not covered in the transfer; they are allowed to use post-prints only because the right to do so, in specified situations, is licensed back to them as part of the publication agreement.

If correct, this would seem to have important implications for Green OA, not least because it would mean that publishers have greater control over self-archiving than OA advocates assume.

However Charles Oppenheim, a UK-based copyright specialist, believes that OA advocates are correct in thinking that when an author signs a copyright assignment only the rights in the final version of the paper are transferred, and so authors retain the rights to all earlier versions of their work, certainly under UK and EU law. As such, they are free to post earlier versions of their papers on the Web.

Charles Oppenheim explains his thinking on this below:

 

Charles Oppenheim

In this article, I will try to tease out the copyright ownership issues associated with scholarly articles.  Before I do so, I first have to explain certain terms used in this piece:

Assignment is when the current copyright owner of a work gives or sells that copyright to a third party.  Assignments cannot be done informally.  They require a signed contract (a formal contract or a letter).  The need for a signature means it is usual to do this by means of the post, face to face, or by fax, though it is possible to do so using e mail under some circumstances.

In contrast, a licence (spelt “license” in the USA) occurs where the copyright owner retains copyright in the work, but grants a third party (the licensee) certain permissions to do things with the work which would not normally be allowed under copyright law.  Licences are usually in writing (for example, the licences libraries sign for access to Elsevier’s Science Direct).  Licences may be charged for, or can be free of charge, e.g., Creative Commons licences. But unlike assignments, licences can exist without any formal agreement. 

Such licences are called implied licences.  In such cases, permissions are granted by custom and practice, rather than by formal agreement. A typical example is where an author submits a manuscript to a scholarly journal.  The author grants the journal editor and publisher an implied licence to forward a copy of the manuscript to peer reviewers and/or to store the article temporarily on its management systems.

Imagine I prepare an article that I would like published in a scholarly journal.  Let us call it D (for draft).  I send D to the editor of the journal, who also receives the implied licence from me mentioned above.  The editor forwards D to some peer reviewers.  In due course, the reviewers pass comments back to the editor, who in turn summarises them in a message to me.  Let us assume certain amendments are required to D.  I make those amendments, and submit the final manuscript (called F) back to the editor.  The editor then asks me to assign copyright in F to the publisher.  Let us assume I sign it.  What are the legal consequences of that signature?

1.      The publisher acquires the copyright in F.  This means no third party – including myself – is allowed to copy, disseminate or amend F without the publisher’s express permission – which may well not be forthcoming.  If I do copy F, say onto an Open Access repository without permission, I am infringing the publisher’s copyright, and the publisher is entitled to insist I take it down (as Elsevier has famously done recently), and could in principle sue me for damages because I have infringed its copyright.

2.      But crucially, I retain copyright in D.  How come?  Because the assignment I gave relates ONLY to F. Assignments precisely specify what is being assigned, and nowhere does the assignment I signed refer to “precursors of F”.  Indeed, it cannot, because that would include the very first stab I made at writing the article, perhaps just a few sentences written many months previously and bearing no relation to D or F. This crucial difference means I am free to do anything I like with D, including posting it on an OA repository.

If D is identical to F – in other words, the reviewers and the editor are so happy with my manuscript that no changes are needed, what follows below does not apply.  However, I suspect in the vast majority of cases, D is different to F.  Note that it is irrelevant if F is very similar to D, or is greatly different, to what follows below.

Posting D on an OA repository is the so-called “Harnad-Oppenheim” solution, first proposed by Stevan Harnad and me more than 10 years ago. 

When the solution was first enunciated, publishers dismissed it for two reasons:  firstly, why would anyone want to read a draft when the final perfect version can be obtained via the publisher? And secondly, it would be difficult to track down a copy of D anyway.  Their comments remain valid today, though the second one is not as strong because of services such as Google Scholar.  But no publisher suggested that the solution was illegal because publishers owned the copyright to D, and they were right not to do so.  The law is clear that I own the copyright in D. That is why I am so puzzled that some recent non-publisher commentators seem to think publishers own the copyright in D. 

Another idea going the rounds is to post F on a repository before signing anything with the publisher, so the publisher is forced to accept that the item has already appeared.  The problem with that approach is that publishers’ licence or assignment terms require the author to confirm that F has not been published before, or is not being considered for publication elsewhere. That’s why it must be D that is posted, rather than F.

I don’t particularly recommend the Harnad-Oppenheim solution, for the reasons publishers gave when the solution was first propounded.  The approaches authors should be taking, in order of preference, are:

1.      Offer the article only to an OA journal or some other OA vehicle

2.      Offer the article to a subscription-based journal which is happy that you give the publisher a sole licence to publish, leaving you free to put F on a repository, possibly after an embargo period

3.      Offer the article to a subscription-based journal, which nominally requires assignment, but will back off and let you insist on a licence if you stick to your guns. (Elsevier is a good example)

4.      Agree to assign copyright to the publisher, and then use the Harnad-Oppenheim solution.

5.      Agree to assign copyright and don’t do anything more.

For nearly 20 years, I have only used options 1, 2 or 3 without problems. I don’t use option 4 because I’ve not needed to. (Disclaimer: where my article has been co-authored with someone from another institution and they are happy to use option 5, I have gone along with it – but that’s been very rare). 

N.B. This commentary is based upon my understanding of UK and EU law; the laws of other countries may be different, but I believe that a copyright assignment in every major country requires a written, signed agreement that refers precisely to the work being assigned, and only that work.

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This text is made available under a CC BY ND licence.  As such anyone is free to re-use it as long as Charles Oppenheim’s name is retained and it is not amended in any way.

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Charles Oppenheim was, until he retired in 2009, Professor of Information Science and Head of the Department of Information Science at Loughborough University. He is currently a Professor at Robert Gordon University, Aberdeen, and a Visiting Professor at Cass Business School, part of The City University, London.  Previously he held posts in other academic institutions, and for twelve years worked in the electronic publishing industry. 

Charles is an Honorary Fellow of the Chartered Institute of Library and Information Profession.

He has been involved in, given talks on, and published on the library and information professions, Intellectual Property Rights and other legal issues relevant to the library and information professions, bibliometrics, evaluation of research quality, and on scholarly publishing trends.

Charles’ most recent book is “The No-Nonsense Guide to Legal Issues in Web 2.0 and Cloud Computing”. 

He can be followed on Twitter: @CharlesOppenh