Is a copyright claim diminished by an owner's refusal to publish?

Question

Alan is aware of an obscure old book that is out of print, and republishes it.

Brenda Books, Inc. objects and sues Alan since they own the copyright. This is not disputed. Brenda Books' claim is a tremendous amount of money.

The book is indeed out of print, and Brenda Books claims the reason it's out of print is the low probable sales don't justify the cost of reprinting it. "We don't cede our interest in the work; it's just not profitable to reprint it."

Thus it is a "dog in the manger" scenario (in which the dog beds down in the cows' food trough, neither partaking of the cows' food not allowing the cows to do so either; thus maliciously wasting the valuable resource to no profit for anyone.) Note that this is a not a "Disney Vault" scenario where the definitely-profitable resource is made artificially scarce to increase its value further: this is a book that the conventional publisher doesn't really have a pathway to make money on. But setting aside the social or moral issues...

How does the fact of Brenda's unwillingness to print the book, affect the damages? Can Alan diminish damages by showing Brenda Books wasn't doing anything with the work anyway, and thus, doesn't really have any lost profits to claim against Alan?

Answer 1

When you own something, you get to decide what you do with it

There is no obligation to make a copyrighted work available and the fact that it isn’t is not a defence to a copyright infringement.

Brenda Books is entitled to either damages or an account of profits. Arguably, they have suffered no damage, so Alan’s profits are the better target. In some jurisdictions, such as the United States, statutory damages (a set dollar amount for each infringement) is available even if there are no damages or profits.

Answer 2

In the contrary: Copyright can be strengthened by not publishing

Unpublished works are protected the same as published works and usually, that is the author's death+70 years. In some cases - unpublished and author unknown - it is creation+120 years and corporate published works are 90 years.

While copyright lasts, the law dictates that it is the absolute exclusive right of the copyright holder to make prints outside of some exceptions. Whether they are printing the work or not does not matter: as long as the right lasts, it's exclusive. The act of refusing to sell a published item does nothing for the strength of their claim in itself.

On the other hand, refusing to publish an unpublished work does strengthen their claim for damages, as an unpublished work that Alan illegally brought to market does not need to be registered - it is still unpublished for the courts!

Fair Use?

In the context of the question, the work has been published, but not offering it does not lessen Brenda Books' claim that it was an infringement.

To overcome the infringement claim as the defendant, there might be a fair use argument by satisfying the balancing test, but the copyright owners' rights in the text are not diminished by there possibly being some ways that allow republishing part or the whole of the work within the confines of fair use/fair dealing.

The problem for Alan is, that unwillingness to grant a license and then not being able to prove fair use/dealing means he should be well aware that he is infringing, possibly even stepping his problem up to wilful infringement in case fair use/dealing is not found. in the US can be penalized with 150 000 USD plus attorneys fees.

A rough estimation of the fair use factors:

• Making copies for sale would weigh extremely against Alan, for archival purposes it would weigh for Alan. (see Authors Guild v. Google, Inc., (2d Cir. 2015))
• The amount taken, impact on the market, and nature of the work count against Alan - making a finding of fair use very tricky.

But.... how did Google get away with copying the whole books? It hinges on the whole copy being searchable, very much transformed, and that the users can't get access to the full text as long as the work is under copyright. From the court of appeals' judgement on the Google case:

(1) Google’s unauthorized digitizing of copyright-protected works, creation of a search functionality, and display of snippets from those works are non-infringing fair uses. The purpose of the copying is highly transformative, the public display of text is limited, and the revelations do not provide a significant market substitute for the protected aspects of the originals.

A rough look at the fair dealing factors:

• The purpose of the copy might cut against Alan most of the time, the mere usage type cuts against, use is ongoing, the whole book is copied, the means are not exactly required, the nature of the book cuts against and it is market usurpation...

In short: I don't see how Alan might manage fair dealing unless it would be very much the Google Books example. Making copies even for a 0 profit would not fly.

Answer 3

It Doesn’t

There are many reasons why a copyright holder might want to take books out of print. The descendants of Theodor “Dr. Seuss” Geisel, for example, recently took a couple of his books out of print on the grounds that they thought some of the lines had become inappropriate by modern standards. The Arthur Conan Doyle estate has never allowed the original version of the first Sherlock Holmes novel to be published, on the grounds that it would only damage the author’s reputation. Mark Twain left instructions for how many years after his death to keep some of his writings from being published, based on how much longer he expected the people he wrote about (and their children) to live and how controversial what he said was by the standards of the time.

In cases like that, the fact that a samizdat version would be popular and widely-read would, from the perspective of the author’s heirs, be the harm they were trying to prevent.

As you know, a trademark can be lost if it is not used and defended, but this cannot happen to a copyright. So, when DC acquired the rights to Captain Marvel from Fawcett Comics, and allowed the trademark to lapse, Marvel Comics was able to create a different character named “Captain Marvel,” it took the trademark for itself, and now DC has to call the original, “Shazam!” However, no one but DC can reprint the original Captain Marvel comics, which remain under copyright.

Proving “A-ha! You let the book go out of print because you thought it wouldn’t sell well, but it did!” would not do someone any good when the jury awards damages. Under U.S. federal law (17 U.S. Code § 504(b))

The copyright owner is entitled to recover the actual damages suffered by him or her as a result of the infringement, and any profits of the infringer that are attributable to the infringement and are not taken into account in computing the actual damages.

So, if the pirate edition sold well, the legitimate rights-holder is still entitled to all the profits from it. If the rights-holder claimed a large amount of damages from lost opportunities to sell the book, but the other party can show that the publisher really believed it would not make them any money, that might be helpful. However, the injured party could still claim statutory damages. In a case like this, it’s risky, but the pirates might try to claim that the public deserved to have the work available. When someone infringes copyright knowingly, “the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000,” (17 U.S. Code § 504(c)(2)) so it matters how sympathetic the judge and jury are to them.

Answer 4

canada

Copyright explicitly applies "whether published or unpublished" (Copyright Act, s. 5).

However, in the fair dealing analysis, the fact that a work is unpublished (if not confidential) weighs in favour of finding that what would otherwise be infringement is a fair dealing (see CCH Canadian Ltd. v. Law Society of Upper Canada, 2004 SCC 13 at para 58):

The nature of the work in question should also be considered by courts assessing whether a dealing is fair. Although certainly not determinative, if a work has not been published, the dealing may be more fair in that its reproduction with acknowledgement could lead to a wider public dissemination of the work — one of the goals of copyright law. If, however, the work in question was confidential, this may tip the scales towards finding that the dealing was unfair. See Beloff v. Pressdram Ltd., [1973] 1 All E.R. 241 (Ch. D.), at p. 264.

united-states united-kingdom

The situation is the reverse in the U.K. and U.S.: "[i]n the United Kingdom and the United States, if a work is unpublished, it weighs against fair dealing" (Giuseppina D'Agostino, "Healing Fair Dealing? A Comparative Copyright Analysis of Canada's Fair Dealing to U.K. Fair Dealing and U.S. Fair Use" (2008) 53:2 McGill L.J. 309 at p. 358).

For works that were previously published but now out of print, this weighs in favour of fair use in the U.S.¹ See e.g. Revision Notes to 17 U.S.C. §107 at p. 28. See also Authors Guild v. Google, Inc., (2d Cir. 2015), which affirmed a fair use finding. The district court said (see 954 F. Supp. 2d 282 (S.D.N.Y. 2013)):

It preserves books, in particular out-of-print and old books that have been forgotten in the bowels of libraries, and it gives them new life.

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^{1. As always for fair use, simply as one of the several factors.}