[ENRIQUE ALONSO GARCIA]

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
—
Full post:
https://www.rd-alliance.org/group/rdacodata-legal-interoperability-ig/po…
Manage my subscriptions: https://www.rd-alliance.org/mailinglist
Stop emails for this post:
https://www.rd-alliance.org/mailinglist/unsubscribe/49445
El texto de este correo es confidencial y exclusivamente está dirigido a su destinatario. Si se ha enviado a una dirección errónea rogamos elimine el mismo y, en su caso, los documentos adjuntos, y nos lo comunique urgentemente. This message is intented only for the use of the addresse and contain confidential information. If you are not the intented recipient, dissemination of this documentation is prohibited. If you have received this communication in error, please, erase all copies of the message and its attachments and notify us immediately.
Antes de imprimir este correo electrónico, piense bien si es necesario hacerlo: El medioambiente es cosa de todos.

Discussion