Protecting, Licensing & Enforcing Your Rights in Digital Publications

Protecting Your Digital Publications from Piracy

The past two decades have seen a shift from print publishing to digital publishing, due in part to growing consumer adoption of digital reading devices, such as iPads, Kindles, and Nooks. Digital publishing offers several advantages over traditional publishing, including reduced production costs, lack of physical shipping expenses, and instant delivery. However, digital publishing also presents risks, including the threat of digital piracy.

Nevertheless, there are tools that can assist in protecting digital content from piracy, including technological protection measures. Technological protection measures include any effective technology, device or component that controls access to digital media. This includes, for example, software that requires users to register an account before viewing an e-book or software that limits the number of users that can simultaneously view an e-book under a single licence. Technological protection measures may also restrict users from performing particular acts, such as copying or modifying the media in question. In Canada, circumventing a technological protection measure (that is, actions taken to avoid, bypass, remove, deactivate, or impair the technological protection measure) is prohibited by the Copyright Act.

Intellectual property rights—which include copyright, trademark, patent and industrial design rights—also offer protection to digital content creators. For example, copyright protects original works of authorship including artistic and literary works, such as photographs, illustrations, graphics, books, computer programs and other works consisting of text.

Copyright law provides the copyright owner the sole right to produce or reproduce the copyrighted work or any substantial part thereof. Copyright law also provides moral rights, which grant the author of a work a right to the integrity of the work and a right to be associated with the work by name or pseudonym or to remain anonymous.

Copyright may be assigned or licensed in whole or in part. While a non-exclusive licence may be granted verbally or inferred from surrounding circumstances, an assignment of copyright or grant of an exclusive licence must be signed and in writing. Moral rights may be waived but cannot be assigned.

Trademarks law further protects words, designs, three-dimensional shapes, modes of packaging, and other source-identifying features as used in association with specific goods or services. Thus, aspects of your branding that are featured in your electronic publications, such as your pen name, the name of your publishing imprint or your business logo, may be protected under trademark law. Like copyright, trademark rights may be assigned or licensed. However, use of a trademark by a licensee only accrues to the benefit of the trademark owner if select conditions are met, including direct or indirect control by the owner over the character or quality of the goods or services in association with which the mark is used.

Digital Publications and IP Licensing

Intellectual property licensing agreements can provide a licensee with permission to use a licensor’s IP in exchange for an agreed payment. On digital platforms, these licensing agreements are commonly known as “terms of use”. Terms of use set the boundaries of the relationship between an author and a digital publisher. In addition to terms relating to royalty payments, common items in terms of use agreements include reproduction rights, modification rights, selection of a governing jurisdiction, representations and warranties, limitations on liability, term and termination of the agreement, and conditions for changing the terms of the agreement.

Reproduction and modification rights cover how an online publication will be used by the publishing platform and by readers. These terms set the applicable technological protection measures for an e-book and illustrate how it will be offered for view and sale online.

Additionally, the terms of use may describe how the publisher may make use of your copyright-protected work to sustain its business model and generate revenue. For example, a publisher may include a term that requires all purchasers of your e-book to be automatically added to an email mailing list as part of the publisher’s marketing strategy.

Regarding governing jurisdiction for your agreement, publishers often select the jurisdiction in which its headquarters are located. For example, a publisher headquartered in Los Angeles may select California as a governing jurisdiction, regardless of whether you as the author reside in California or even the United States.

Representations and warranties under terms of use set the work standards that the parties to the contract can rely on and the indemnities that will be offered in the event of non-compliance. Indemnification clauses minimize the inherent risks associated with entering into a transaction. An agreement might state, for example, that you indemnify the publisher for any legal fees or liability incurred from a third party’s infringement claim (such an agreement might also contain a representation and warranty that you did not infringe a third party’s intellectual property). Limitations on liability can be used to limit the amount and types of compensation one party can recover from the other party.

Provisions relating to term and termination may address the time length of the agreement, the circumstances under which the agreement can be terminated, and what happens to your content and/or the remaining terms of the agreement in the event of termination.

Standard clauses in a contract may not accurately reflect your intentions. Consulting a professional before finalizing and signing the agreement can ensure that the terms of the agreement reflect your interests. If, for example, upon termination of the agreement, you would like all rights, title and interest in and to the copyrighted work, that were previously granted to the publisher to revert back to you, you should ensure such terms are expressly stated in your agreement.

Lastly, procedures for ongoing amendments to the licensing arrangement will affect how your rights as a content creator under the terms of use can evolve over time and whether the contractual relationship can be modified by only one party or if both parties must agree to a change for it to be legally valid.

Amendment procedures are incredibly important, since some terms of use rights may be critical to your continued commercial success but may be removed entirely at the discretion of the publisher. Furthermore, the imposition of new limitations under a terms of use agreement, like the mandatory insertion of advertisements into your e-book after a certain number of pages are read, can materially affect how readers react to your work and may interfere with your ability to run your business.

Navigating a terms of use agreement and understanding what exactly it means to select ‘I agree’ can have a meaningful impact on how you commercialize your work. If there is a condition in the licensing agreement that requires you to exclusively publish your book with a single publisher, is that a deal breaker for your business?

If the publisher’s negligence gives rise to a data breach that makes your e-book available online for free, will you have a legal claim against them for compensation? These are considerations you should address before finalizing and signing your agreement.

Understanding and Enforcing IP Rights in the Digital Age

Understanding the scope of your IP rights—and how to enforce these rights—is especially important in the context of digital media. Digital works are particularly susceptible to large-scale unauthorized use, which can substantially affect a content creator’s ability to generate revenue or expand its market reputation.

Identifying your IP rights as a digital content creator is the first step in being to effectively protect, manage, and monetize these assets.

Consulting with an intellectual property expert can help you identify the most valuable aspects of your work and ensure robust protection against would-be infringers. If you want help with protecting, licensing or enforcing your rights with respect to a digital publication, contact us now for a complimentary and confidential initial telephone appointment.