[Christoph Bruch]

Thanks Gail Enrique!
When asking the question I did not have punitive sanctions in mind but
private law suits for damages.
What Gail describes for Caltech is what I had in mind as a possible
solution.
At Helmholtz we considered asking authors (=individual decisions) to grant
non-exclusive rights to their employer.
In practice this would probably result in a very small fraction of authors
actually adhering to the request.
This would make it more difficult to communicate with the publishers as
authors who did not transfer rights to their employer may fear that they
suffer disadvantages nonetheless.
I believe the publishers would think twice before suing and if they would
sue the employer.
But as this is just speculation and there is an undeniable risk for the
authors I think we will refrain from going down that avenue.
Christoph Bruch
Helmholtz Association
Helmholtz Open Science Coordination Office
W: http://oa.helmholtz.de
M: +49 (0)151 14 09 39 68
—–Ursprüngliche Nachricht—–
Von: Gail Clement [mailto:***@***.***]
Gesendet: Dienstag, 4. August 2015 22:32
An: ‘enriquealonso’; ‘bruch’; ‘RDA/CODATA Legal Interoperability IG’
Betreff: RE: [rda-legalinterop-ig] RE: follow up christoph Q
[rda-legalinterop-ig] green road
Hi Enrique
The short answer is “yes”.
The circumstances around this are as follows, but I am asking for discretion
in keeping this information within our working group.
1. Caltech faculty have approved an institutional OA policy that
automatically permits the Institute to exercise copyright owners rights in
the work (http://library.caltech.edu/coda/OA_Policy_6.10.2013.pdf)
2. The Library has sent a copy of this policy to publishers to advise them
of this circumstance 3. Caltech authors are expected to attach a copy of the
policy to any copyright transfer agreement and modify the agreement to
indicate that they have already assigned Caltech rights 4. In practice,
Caltech authors are signing publisher CTA’s without taking care to amend the
CTA document or attach the institutional policy.
Net effect: is the copyright transfer agreement with the publisher valid?
Who owns the copyright in the Caltech article published in a journal?
We are unclear on this point at this time. I have sought the advice from our
General Counsel and still awaiting advisement.
Gail P. Clement  | Head of Research Services  | Caltech Library  | Mail Code
1-43  | Pasadena CA 91125-4300  | 626-395-1203
http://orcid.org/0000-0001-5494-4806 | library.caltech.edu
—–Original Message—–
From: enrique.alonso=***@***.***-groups.org
[mailto:***@***.***-groups.org] On Behalf Of
enriquealonso
Sent: Tuesday, August 04, 2015 12:10 PM
To: Enrique Alonso García ; bruch
; ‘RDA/CODATA Legal Interoperability IG’

Subject: [rda-legalinterop-ig] RE: follow up christoph Q
[rda-legalinterop-ig] green road
Christoph see follow-up below, but also:
Gail, have you seen any cases in which a professor, disregarding
institutional policies on mandatory grant of non-exclusive rights to the
University (in Universities which, following the Harvard´s initial policy of
20068 have implemented similar policies or licenses), grants all exclusive
rights to the publisher without disclosing any representation of such prior
policy or license in the publishing contract?
Paul, can you advice on this?
Follow up:
Actually, since the publisher of “acquirer of the right” did not really
acquire it (it only got what was not given previously to the institution by
the policy of license) the former has no real copyright. So there is no
infringement per se of any copyright and Section 504 of the Copyright Act
would not be applicable. The problem the institution might face is dispute
about the said rights by the publisher (and it is the institution who would
face the infringement action of Section 504) but the author would get into
problems mostly because of breach of contract, submitted to indemnification
under publishing contracts rules but not of copyright. These contract
clauses are usually included and imply loss of royalties and rights awarded
by the contract plus other usual clauses on indemnification, such as e.g.
those that give control of the defense -or right to claim against the
institution or any third party- to the publisher, that give the publisher
authority to settle any claims (sometimes conditioned on the author’s
reasonable consent), that allow the publisher to suspend royalty payments
even while any claim is pending, or that oblige the author to cooperate in
the defense; in some cases they also provide that the indemnity survives
termination of the contract.
But, … I haven´t found real cases. Since the first institution to have
such institutional policy was the Faculty of Arts and Sciences of Harvard
University and I used to know personally .-nless she has changed- the head
legal counsel, I could enquire if any member of the faculty has by any
chance been sued by a Publisher because he/she did not disclose or made any
representation of the policy to the publisher. (or if Harvard has been sued
for enforcing its own policy against any publisher claim)
________________________________________
De: Enrique Alonso García
Enviado el: martes, 04 de agosto de 2015 19:32
Para: bruch; ‘RDA/CODATA Legal Interoperability IG’
Asunto: RE: [rda-legalinterop-ig] green road
Good question indeed !!
Almost all non-exclusive institutional (or employer) rights are based on
Section 205(e) of the Copyright Act which provides that a prior
nonexclusive license evidenced in a writing signed by the right holder
prevails over a subsequent conflicting transfer of copyright ownership, It
is disputed if the prior grant of non exclusive rights needs to be in
writing and courts have said no, if it is specific enough (in comparison
with exclusive rights prior institutional grants). So prevalence over
pubisher rights, or other later exclusive rights transfers, is clear.
But the Act remains silence as to which are the rights of the Publisher if
no notice is given about this preexisting non-exclusive right. Most policys
and licenses assert the lack of liability of the institution itself and
strongly recommend (and even have written models of recommended addenda) the
autor to notify (and include the adenda) in the publishing contract. But
what damages (statutory or actual) might the Publisher ask from the autor if
the previous policy or lcense to the institution is not disclosed, remains a
judicial case by case issue. It also depends on what is the content of
policy or license (e.g. if it simply documents fair use, then there are no
publisher rigts).
If I have some time I´ll look for case law.
Beware. This is very tentative and comes up from the top of my head.
,________________________________________
De: christoph.bruch=***@***.***-groups.org
[christoph.bruch=***@***.***-groups.org] En nombre de bruch
[***@***.***] Enviado el: martes, 04 de agosto de 2015
17:05
Para: ‘RDA/CODATA Legal Interoperability IG’
Asunto: [rda-legalinterop-ig] green road
Dear All,
I’ve got a question that is not related to research data but copyright
protected publications.
Some research organisations advocate granting non-exclusive rights of a work
to the employer before transferring exclusively copyright to a publisher
thus ensuring the green road can be used without the need to get the
publisher consent.
According to my understanding of German copyright law this would only work
if the author would inform the publisher about the previously granted rights
as this impairs the exclusivity the exclusive transfer.
Without the prior notice the author risks being sued by the publisher.
Is the legal situation different in the US?
Regards,
Christoph
Christoph Bruch
Helmholtz Association
Helmholtz Open Science Coordination Office
W: http://oa.helmholtz.de
M: +49 (0)151 14 09 39 68
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