Re: Assignment of Copyright in Cyberspace

From: Terry Carroll <carroll[_at_]tjc.com>
Date: Tue, 7 Apr 1998 11:16:44 -0700 (PDT)

On Mon, 6 Apr 1998, Juliann Krute <juliann[_at_]people-are.strange.com> wrote:
>
> Although this is hardly a novel issue, it is one that I am seeing more
> and more frequently in the online world. Author A starts a project
> (presume here a non-profit web page on a specific topic). Author A gets
> bored with the project, Author B offers to maintain the pages and update
> them, etc. Author A says in an online chat "I can't be bothered to
> update the pages anymore but I don't care if you want to go ahead."
>
> Has an effective transfer of copyright taken place?

First, I note that you sign, "University of London." I take it that's London, Ontario, not London, England (because strange.com is an Ontario-based domain). In any event, except as noted, I'm answering with respect to U.S. law. Although many areas of international copyright law is consistent across countries because of the requirements of the Berne Convention, the mechanics of copyright conveyance is not much governed by Berne, so there could be substantial country-by-country variation. Hopefully, someone familiar with Canadian law will answer for that jurisdiction.

(I note that U.S. law will continue to govern to the extent that you're interested in enforcing the copyright in the U.S., since that's a U.S. copyright.)

I would say, "no." I would characterize this as a license to reproduce the original work and to prepare derivative works in the form of revisions to it.

A transfer of copyright requires a writing signed by the conveying party. In the U.S., that's a provision of section 204(a).[1]

Now, you can argue, based on some UCC (that's Uniform Commercial Code, not Universal Copyright Convention) cases interpreting the UCC's definition of "signature" meets this requirement. The UCC definition of signature is essentially any marking intended to authenticate the writing. There have been cases that have held this satisfied by use of company letterhead stationery, or even by the tell-tale added by a corporate fax machine. I guess you could extend this further to email RFC822 headers, although I think it's a little difficult to show that the sender came up with those headers with intent to authenticate. And, in this version of your hypothetical, the discussion is in an online chat, with no email headers -- so what could you rely on to satisfy the signature requirement?

But you've got to remember that the UCC is state law, and there's no reason to believe that either its definitions or the state law interpreting them are necessarily imported into the federal Copyright Act.

More importantly, though, is the substance of the purported conveyance. What you describe is a person B asking for specific permissions, and person A granting them. I find it hard to construe the email exchange indicating any intent to convey the copyright.  

> If not, would it be effective if the statement had been made via email?

Probably not; the only distinction is that you have a slightly better argument that there's a signature. But I still maintain that even with a signature, the statements do not convey copyright.  

> Does it matter that Author A sent the .html files directly to Author B?

Not really. Section 202 makes it clear that transfer of the copy is not transfer of the copyright. I suppose the transfer of the copies could be helpful in determining the intent of the agreement, but in this case, the transfer is just as consistent with the license as it is with the conveyance, so I don't think it's helpful.

[1] While I repeat that I don't know much about Canadian law, I note that section 13(4) of the Canadian Copyright Act is pretty similar to the U.S. section 204(a):

U.S. section 204(a):

     A transfer of copyright ownership, other than by operation of law, 
     is not valid unless an instrument of conveyance, or a note or 
     memorandum of the transfer, is in writing and signed by the owner 
     of the rights conveyed or such owner's duly authorized agent. 

Canada section 13(4):

     The owner of the copyright in any work may assign the right, either
     wholly or partially, and either generally or subject to territorial
     limitations, and either for the whole term of the copyright or for
     any other part thereof, and may grant any interest in the right by
     licence, but no assignment or grant is valid unless it is in writing
     signed by the owner of the right in respect of which the assignment
     or grant is made, or by his duly authorized agent. 

--
Terry Carroll       |  "I know the Great Lakes.  I've traveled the 
Santa Clara, CA     |  Great Lakes.  And Lake Champlain is not one of
carroll[_at_]tjc.com     |  the Great Lakes." - U.S. Senator John Glenn reacts

Modell delendus est | to 33 U.S.C. 1122 as amended by Pub.L. 105-160 Received on Tue Apr 07 1998 - 18:16:56 GMT