HarperCollins Publishers LLC v. Open Road Integrated Media, LLP
7 F. Supp. 3d 363 (2014)
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Rule of Law:
A grant of publishing rights that includes broad, forward-looking language contemplating future technologies, such as use through 'electronic means now known or hereafter invented,' is sufficient to convey rights to new uses like e-books, even if that technology was not commercially viable when the contract was executed.
Facts:
- On April 13, 1971, author Jean George entered into a publishing agreement with Harper & Row (HarperCollins' predecessor) for the novel 'Julie of the Wolves.'
- The agreement granted HarperCollins the exclusive right to publish the work 'in book form.'
- Paragraph 20 of the contract allowed the publisher, with the author's consent, to license the work for 'use thereof in storage and retrieval and information systems, and/or whether through computer, computer-stored, mechanical or other electronic means now known or hereafter invented,' with proceeds to be split 50/50.
- The contract also contained a 'Reserved Rights' clause, reserving to the author all rights not specifically granted.
- In 2010, after HarperCollins offered a 25% royalty for an e-book edition, Jean George, believing she retained the e-book rights, declined the offer.
- In April 2011, Jean George entered into an agreement with Open Road Integrated Media to publish an e-book version of 'Julie of the Wolves.'
- Beginning in October 2011, Open Road began distributing and selling the e-book version of the novel.
Procedural Posture:
- HarperCollins Publishers LLC filed a lawsuit against Open Road Integrated Media, LLP in the U.S. District Court for the Southern District of New York.
- The complaint alleged willful copyright infringement.
- Following the discovery phase, both plaintiff HarperCollins and defendant Open Road filed cross-motions for summary judgment.
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Issue:
Does a 1971 publishing agreement that grants the publisher the exclusive right to publish a work 'in book form' and also grants licensing rights for use 'through computer, computer-stored, mechanical or other electronic means now known or hereafter invented' convey the exclusive right to license an e-book edition of the work?
Opinions:
Majority - Judge Naomi Reice Buchwald
Yes, the 1971 publishing agreement conveys the exclusive right to license an e-book edition of the work. The court's interpretation is based on a plain reading of the contract, particularly the forward-looking language in Paragraph 20. That clause, which grants licensing rights for use via 'computer, computer-stored, mechanical or other electronic means now known or hereafter invented,' is sufficiently broad to encompass e-book publication as a later-developed technology. This conclusion aligns with Second Circuit 'new use' precedent, which holds that broad grant language can cover unforeseen technologies. The court rejected the defendant's argument to disregard the 'and/or' phrasing in the clause, holding that the contract should be enforced as written, especially since the author's own agent drafted the language. The general 'in book form' grant in Paragraph 1, when read together with the specific electronic rights language in Paragraph 20, is expansive enough to include e-books.
Analysis:
This decision reinforces the principle that forward-looking language in older copyright grants is highly significant when determining rights to new technologies. It confirms that clauses such as 'hereafter invented' place the burden on the grantor (the author) to explicitly reserve rights for future media. The case serves as a key precedent for interpreting pre-digital era publishing contracts, demonstrating that courts will rely heavily on the specific text of the agreement over extrinsic evidence of intent for technologies that did not exist at the time of contracting. It signals that publishers holding legacy contracts with similar broad, future-proof language are likely to control the digital rights to those works.
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