Editorial Relations Introduction. The PACA Editorial Relations Committee was formed in October 2010 to address the increasing issues with future and past licensing to textbook publishers and develop a suggested plan to resolve these issues preferably without litigation.
The committee is supported by PACA, ASMP, ASPP and BAPLA with active members in weekly discussions on toward the goals outlined above. PACA, ASMP, ASPP and BAPLA members have formed a Glossary sub-committee reviewing and updating terminology in the PLUS glossary for editorial licensing.
This process has been a long one and while we feel like we are making headway with some of the publishers, there are still more discussion ahead. As we continue with the committee work, we wanted to share some of our experiences in discovering the scope of some of these issues and possible ideas for beginning individual discussions toward a resolution.
Understanding that each agency and photographer has to weigh individually the consequences of any action they take, either through settlement discussions or litigation, we have tried to lay out some information in this toolkit that may help reach a decision on the best plan of action for your business.
Please note that this is an ongoing project and we welcome input from all of you. If you have suggestions on things to add to this document please email Editorialrelations@pacaoffice.org with ER Toolkit in the subject line.
Editorial Licensing Toolkit
Researching License Requests
Licensing requests for re-use and license extensions are being received regularly now. It is sometime difficult to ascertain what a license request for “new” use is and a license request for products or print runs that have already been produced. Following are some ideas for trying to make this determination:
For each title:
- Compare any original license request and the actual license that you granted.
- Check the publisher’s website to see whether the title’s current and earlier editions are offered in electronic version (website, e-book).Did you license for such use in earlier editions?
- Check the publisher’s website to see whether the title is offered in split volumes (e.g. Combined, Vol I, Vol II).Did you license for one-time use or multi-use?
- Check the publisher’s website and Amazon to see if there are any foreign language versions.Did you license for one language or two?
- Check any license requests that state “Re-Use”. (Do not assume that the assertion that the image was previously licensed is correct).Did you actually grant a license for earlier “Re-Use” and do the rights previously granted match what is stipulated in the Re-use request?
- Could your distribution partners have granted the original license?In addition to checking your own records, if the material in question was available through distribution partners that may have granted the rights, you will want to verify that they did not grant the rights in question.
Retroactive License vs. License for New Usage
The research done in steps 1 – 6 above may help to determine if there are electronic versions, additional translations or derivatives that may not have been included in the previous license. With this information and the belief that part of the new Print/Unit Run should be a retroactive license, the following are some ideas of how to handle the request.
- Contact the Client. Here is a sample message:“Thank you for the recent billing requests for [PROJECT NAME]. The cover letter (or invoice request) indicates that the request is for an extension of rights for the program with a ©[DATE]. [Include other information provided that indicates an exceeded license]. Based on the information provided it is assumed that the original license has been exceeded prior to this request. Since the new license request extends the term for another [Number] years, I do not want to charge a retroactive fee on the total print run being requested but only on the quantity that has already been printed and exceeds the original license.“Please forward this information to me as soon as possible. If I do not receive it within 30 days, I will have no choice but to bill a retroactive license fee on the total print run requested.[If your research also revealed additional usage that had not been granted, you should outline your findings and ask for the usage specifics.]“If you have any questions please let me know.”
- Issue an Invoice:As with any license request, review the terms and rights requested carefully and make sure that they match either a current agreement that you have with the client or are modified to only include the rights you are willing to grant and set your fees accordingly.General suggestions regarding the license request:
- Limit the term to less than 20 years.
- Delete any language on the license request that has the effect of seriously weakening your rights to claim damages for past misuse.
- Carefully review language that outlines recourse for exceeding licensed rights in the future.
- If there is an existing agreement in place, make reference to this too and amend any other terms on the license request, which attempts to exclude any other agreements.
- If you find that the rights being requested are much broader then what has been agreed on in your current agreement, issue a license for the broader rights at a fee determined to cover the rights needed.
- Add the following wording to the license request: “We reserve the right to modify this license or issue an additional license should there be additional usage.”
Calculating the Invoice:
- Client gives you the information regarding already produced material: Determine the base rate and multiplier for the material already produced. Discuss with client and issue a retroactive license. Then issue an invoice for the rights needed on a go forward basis.
- You do not hear back from the client: Issue a retroactive license, based on the rights requested and additional rights discovered determine your base fee and use the multiplier as indicated in your terms and conditions of your invoice for unauthorized use. (If you do not have a multiplier, others in the industry are using anywhere from 3 – 10 times the base rate.)
- Client replies that all usage is new: Unless you have information proving otherwise, issue an invoice based on new use. You may include a statement in the invoice indicating that this invoice is for future use with a start date, no retroactive rights granted.
- Invoice Follow-up:
- Payment is received, issue is settled.
- Client calls to discuss invoice. Explain the process for a retroactive license. You may agree to negotiate with the client to settle the retroactive use. Also set a precedent for how to handle future situations that may come up.
- Invoice is not paid and client does not return calls. Send a collection letter or series of letters as you would for other invoice collections. Be prepared to send it to your lawyer for additional follow-up if needed. All letters should emphasize the desire to settle the infringement without litigation.
- Negotiation discussions:At the point that you have the client willing to discuss any retroactive rights including terms to reach a settlement also include the terms of future use of the images and try to work in terms for a forward moving agreement.Have readily available the evidence obtained through your earlier research of, unlicensed and undeclared use (using any recent requests for “extensions”, together with researching earlier licenses issued to the same publisher for which you have not yet received a request for an “extension”) so you are in a better position to choose your negotiation stance and which course of action to take.As an alternative to litigation, the retroactive part of the license may be taken care of by way of a negotiated settlement formula not involving litigation.In the absence of an in-house lawyer to provide counsel, you may find that retaining a lawyer could be very helpful at this stage or indeed at any stage in the above process.Until a settlement is reached and payment is received, you reserve the right to proceed through litigation if needed.
- If a settlement cannot be reached:During the process of discussions define your negotiation points and boundaries that, if not met, you would consider taking a stronger legal stance. These boundaries may vary depending on the client and the importance of their business to your company.