The following article appears in the journal JOM, 50 (10) (1998), p. 88. JOM is a publication of The Minerals, Metals & Materials Society

The Legal Aspects of Authoring Technical Articles and Books

Whether writing an article for a technical journal or writing a book, certain preliminary evaluations must be made, and the terms and conditions governing the relationship between the publisher and the author or authors must be established. If the technology was generated by the author as an employee within the scope of employment or under a consulting agreement or other agreement that might place the ownership of copyright, patent rights, or trade secrets with someone other than the author, approval must be obtained from the owner. Under work-for-hire concepts, one who engages an employee or certain others to create a work is regarded as the owner of copyright in the work. Therefore, the person creating the work under such circumstances does not have the right to publish the same without consent or a license.

To the extent that trade secrets might be involved, the owner might not be willing to have the information published. In addition, publication could result in the immediate loss of foreign patent rights and loss of U.S. patent rights one year after the date of publication. Often, the owner will consent if given the right to review a manuscript to make sure that important confidential technology is not revealed to the public.

Important decisions must be made with respect to the naming of authors of the article or book. Not only must consideration be given to proper attribution of authorship, but there have also been instances where a coauthor has regarded the work as being incomplete or inferior to the extent that he or she did not want to appear as a coauthor.

Publishing technical articles frequently involves a simple understanding of the terms and conditions under which the article will be published. One important consideration is whether the publisher or the author or authors will own the copyright in the published work. If the publisher is to own the rights, the author should give consideration to what reservations the author might desire to make in terms of future use of the material in other publications, reproductions of the article, and the right to make derivative works from the article. Publishers frequently look to the sale of reprints as an additional source of income. In general, there should be a balancing of interests dependent upon the nature of the publication, the content of the technical article, and the authors' future plans. In the event that the author owns the copyright, the agreement should specify the nature of rights granted to the publication (e.g., the right to publish in hard copy the first English language version of the article, but no rights to publish translations or other media or electronic versions).

As technical journals typically do not offer compensation to the author and the amount of time involved in generating an article is not as substantial as the creation of a book, many issues that become important in a book-publishing contract are not of great consequence in an agreement dealing with an article.

One must be careful not to violate the copyrights of others when including material derived from another source. Some authors have the misconception that if they give proper credit to a prior author, there cannot be liability for copyright infringement. This is not correct. The right to use another's copyrighted work, without permission, is limited to situations falling within the statutory category of fair use and certain educational and library uses, as well as certain other special circumstances.

Book contracts, which involve a substantially greater effort, typically are printed forms that the publisher provides for consideration by the author. One should not assume that because the agreement presented to an author is from a reputable publisher that it is fair and appropriate under the circumstances. While a comprehensive review of the various types of book-publishing agreements is beyond the scope of this article, some issues are common to all.

Typically, the author is required to produce a manuscript of a target length by a specific date. Mechanics for reviewing proofs and the expense of changes are normally spelled out. Compensation to the author, which may include an advance against expenses or an advance of a greater amount, and royalties based on sales and licensing are included. Unlike technology licensing, publishing agreements frequently involve an increase in the royalty percentage paid to the author as the sales volume increases. The author is generally required to warrant that all consents to use works by others have been obtained, and the work contains nothing defamatory.

One very important provision, which is not always present in standard agreements, requires the publisher to distribute a first edition of a specified number of books by a given date. Failure to include such a provision could result in the publisher delaying publication indefinitely while the author is unable to take the work to other publishers.

It is desirable in a book-publishing contract to provide a clause that in the event the work becomes out of print, which may be defined in terms of the sale of less than a specified number of books in a given year, the author can elect to obtain an assignment of the copyright in the work (if the publisher owns the copyright) and terminate the agreement. Also, such provisions frequently permit the author to purchase, at cost, from the publisher the existing inventory of the books, work in process, and artwork, as well as versions of the book stored on magnetic media.

Normally, a book-publishing agreement would give the author the right of first refusal to create revised versions in the event that the publisher wishes to publish future editions. The author's refusal to do so or inability to do so would generally free the publisher to have another do such work. The author of the book usually obtains a small number of copies free and can purchase more copies at a discounted rate.

If a book manuscript is to be created with one or more coauthors, selection of the coauthors can be critical. It is not only important that the coauthors have the professional knowledge required to produce a high-quality work, but also that they can be relied upon to adhere to publishing deadlines. Technically, as authors are generally treated as a unit in book-publishing contracts, a coauthor's failure to meet deadlines or to perform other obligations under the agreement could result in all of the authors being deemed in breach of the agreement.

For more information, contact A.B. Silverman, Eckert Seamans Cherin & Mellott, LLC, 600 Grant Street, 42nd Floor, Pittsburgh, Pennsylvania 15219; (412) 566-2077; fax (412) 566-6099; e-mail ARNIE@TELERAMA.LM.COM.