When Infringement Meets Online Publishing

In the 1990s, as computers and Internet access became household norms, the advent of e-books held the promise of accessing bestsellers with a mouse click. In 2000, Stephen King released a novel exclusively on his Web site. Bibliophiles debated the merits of flat-screen reading versus the tactile pleasure of dog-earing favorite pages. Then, not much happened.

“Many authors don’t like the idea of their books being available in e-book form,” says Dale Cendali, an O’Melveny & Myers partner who chairs the firm’s Intellectual Property & Technology practice and the Copyright, Trademark and Internet Litigation Subpractice. Cendali, whose clients have included J.K. Rowling and Twentieth Century Fox, says e-books carry concerns beyond tactile enjoyment. “Once you make anything available digitally, there’s the potential for serial infringement. Illegal downloading is hurting the music industry. If e-books become more prevalent, this is going to become more of a problem.”

R. Bruce Rich, senior partner at Weil, Gotshal & Manges and co-author of The Business & Legal Guide to Online-Internet Law, says, “This goes back to when the publisher got the right to publish in book form and what those rights encompass, since many of these contracts predate the electronic age,” he says. Rich, who heads Weil Gotshal’s Intellectual Property & Media practice, says that courts will likely rule in favor of authors.

A recent copyright infringement lawsuit may affect the right to reproduce copyrighted material online. In October 2005, The Association of American Publishers organized a copyright protection suit against Google on behalf of five major U.S.-based book publishers. At issue is Google Book Search (GBS), a searchable database and search engine of books in print at several prominent universities. “This case seeks not damages but a declaration by the court that Google commits infringement by scanning entire copyrighted works without permission,”says Cendali. “Google argues that it’s not making entire works available, only searchable for information-gathering purposes.” By making only portions of the works available, Google claims its actions fall under the “fair use” exception to copyright infringement. “The question is,” says Cendali, “do they have the right to copy it unilaterally or should they have to go to the copyright owners to strike a deal?”

Rich says work in an e-book deserves equal protection and exclusive rights. “It still retains copyright,” he says. Cendali adds, “It’s clear from previous cases that the law has recognized that the right to permit someone to publish their book as an e-book is a right that the copyright holder has. The question is whether what Google is doing is infringing that right or not.” The bottom line for e-book authors is that the outcome of this case will affect them in the same way it will affect publishers of printed books.

For more information on this area of intellectual property law, see our intellectual property overview.