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Protecting, Licensing & Enforcing Your Rights in Digital Publications

By: Christopher Heer, Mala Milanese, Dominic Cerilli | Last updated: March 24, 2020

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 all software that limits 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 license.

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 creator of a work with the sole right to produce or reproduce the work or any of its essential parts. Copyright law also provides moral rights that protect against any use of copyrighted material that would compromise its integrity or deprive the creator of their right to be identified in association with the work.

Trademarks further protect any word, design, shape, wrapping, or other identifying feature associated with a brand. It follows that aspects of your branding that are featured in your electronic publications, including your pen name or your business logo, may be protected under trademark law.

Lastly, industrial design registration also provides protection for any original visual features of your publications. While digital media lacks a tangible form, there is still significant value in adding original visual design elements to online publications to help catch the attention of prospective readers and draw them to your content.

Digital Publications and IP Licensing

Intellectual property licensing agreements 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. Common items covered in terms of use agreements include reproduction rights, modification rights, selection of a governing jurisdiction, representations and warranties, limitations on liability, 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 their 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.

With regard to the governing jurisdiction for your agreement, publishers often select the jurisdiction in which their headquarters are located. For example, a publisher headquartered in Los Angeles may select California as a governing jurisdiction, regardless of whether or not you as the author reside in California or even the United States.

Representations and warranties under a 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. Limitations on liability can be used to limit the amount and types of compensation one party can recover from the other party.

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 their 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 to 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 to a digital publication, contact us now for a complimentary and confidential initial telephone appointment.