Peter B. Hirtle
When an author publishes a book or a paper, many publishers ask the author to transfer all copyrights in the work to the publisher. But that is not always to the author's advantage.
When authors assign to publishers all of the rights that comprise the bundle of rights known as copyright, they lose control over their scholarly output. Assignment of copyright ownership may limit the ability of authors to incorporate elements into future articles and books. Authors may not be able to use their own work in their teaching, or to authorize others at the institution or elsewhere to use materials.
Unless addressed in the transfer agreement, the publisher may forbid an author to do the following:
For all of the above reasons, many organizations and institutions have encouraged authors to better manage their copyrights. The Board of Regents of the University of Texas, for example, requests that authors manage their copyrights for the benefit of "the authors, the citizens of Texas, state government, the component institutions, and the U. T. System" .
Maintaining some rights may be to the benefit of the author and his or her institution, but how can this be done?
One Solution: The Author's Addendum
Until recently, the primary method that authors could use to retain some rights in their writings was to rewrite the contract with the publishers themselves. Thanks to the development of standardized author addenda, the task has become much simpler. An author's addendum is a standardized legal instrument that modifies the publisher's agreement and allows the author to keep key rights. The addenda usually spells out what rights the author does or does not have in several key areas:
Three different organizations MIT , Science Commons (through its Scholar's Copyright project), and SPARC have worked with lawyers to develop self-sufficient addenda that address these issues. These addenda can be attached to the publishing contracts received by publishers and are likely to be legally binding. The five addenda and my abbreviations for them are:
In addition to these five addenda, other flavors of publication amendments are beginning to appear. For example, OhioLINK has developed its own modification of the MIT Amendment . OhioLINK's most important change was to increase the scope of MIT's amendment. The MIT Amendment, like the other four addenda listed above, is limited to contracts for the publication of articles. OhioLINK modified the agreement so that it can also apply to books, book chapters, poems, musical compositions, and other creations . At heart, however, the OhioLINK template is the same as the MIT Amendment and so will not be considered separately in this analysis. Similarly, Deborah R. Gerhardt of the University of North Carolina has slightly modified the SPARC Author's Addendum for the use by its faculty .
In addition, Kenneth Crews, the Director of the Copyright Management Center at Indiana University Purdue University Indianapolis, has devised two addenda that can be attached to publishing contracts . The privileges found in Crews's addenda are also found in many of the addenda discussed in this article, but Crews's proposals lack the comprehensive structure that would make them easy to implement. For that reason, Crews's addenda will not be considered here.
A Comparison of the Five Author Addenda
The following charts highlight the major features of each of the addenda, with the addenda ranked in order from the one that offers the most rights to the author to the one that is the least permissive:
Author's use of the work
KEY: "+" = permitted; "-" = not allowed or not addressed; "o" = allowed in certain cases; "?" = unclear.
Table 1: Author's Rights
Table 1 addresses what rights the author retains under each addendum to use her work even after copyright is transferred to the publisher. All of the addenda allow authors to reproduce, distribute, perform and display their work in conjunction with their teaching and professional activities. The SPARC agreement, however, only authorizes non-commercial use by the author; it would not authorize an author to use the work in a for-profit education endeavor, consulting business, or other commercial professional enterprise.
All of the agreements would also allow authors to make non-commercial use of the material, though in the case of MIT, SC2, and SC3, these non-commercial purposes are limited to the author's "teaching, conference presentations, lectures, other scholarly works, and professional activities." An author, for example, could not make copies of her article to give to her family and friends. This would be a non-commercial distribution unrelated to her professional activities.
None of the addenda allow the author to make totally unrestricted use (including commercial use) of the work. Because the MIT, SC2, and SC3 addenda do allow authors to use their works in conjunction with teaching and professional activities, in theory an author could sell copies of an article or perhaps even authorize another publisher to republish it if she felt it contributed to her professional development.
Being able to use some or all of one's work as a basis for another publication is an important right most authors want to retain. At my institution, for example, a faculty member recently was asked to pay $400 in order to include a figure from one of his articles in a subsequent publication. Another faculty member was told that he could not publish a second edition of a book because the publisher of the first edition, to whom he had transferred copyright, worried it would compete with another title on their list. The right to utilize a work in later creations is defined as the right to make derivatives. All of the addenda ensure that an author can freely use prior work in subsequent publications though once again the MIT agreement limits the author's rights to scholarly, academic, and professional activities. For example, other addenda would allow an author to turn his article into a Hollywood movie; the MIT agreement would not.
Authorizing others to use one's work
Table 2: Author's Authorization Rights
Table 2 addresses the ability of an author to authorize others (outside the author's own institution) to make use of a work even after the author has transferred copyright to a publisher. An author may, for example, want to give a colleague at another institution permission to distribute an article to students in the colleague's class. Similarly, the author might want to be able to grant permission to include a chart or figure from the article in a colleague's subsequent publication.
Only the SC1 and SPARC addenda secure for the author the right to authorize others to use her work. Both allow the author to retain the right to authorize others to make non-commercial use of her work so long as the author receives credit as the author and the journal in which an article was originally published is cited as the source of first publication of the article. The other addenda do not allow authors to authorize others to use their works, and no addendum permits the author to authorize commercial use of the work.
Table 3: Use by the Author's Institution and/or Funding Agency
Table 3 depicts the rights of the author's employing institution and the funding agency that supported the research that led to the creation of the article to use the work (other than in an institutional or subject repository, which is discussed in Table 4). While most universities concede ownership of scholarly work produced by their faculty to the authors of those works, there is still a sense that to some extent the university contributes to the creation of the work and should be able to have some interest in it. Similarly, agreements with funding agencies will often stipulate that the funding agency retains some rights in the work (such as the right to distribute copies if it wishes). Yet a standard copyright transfer agreement may not recognize or permit these grants of rights by the author prior to the transfer of copyright to the publisher. The copyright transfer agreement might state explicitly that there have been no such prior grants of copyright rights or, more commonly, that the publisher will have the exclusive right to exercise all copyright rights. An author who licensed some non-exclusive rights to her institution or funding agency, and then later asserted to a publisher that she was transferring all rights of copyright to that publisher, could potentially be held liable for breach of contract with the publisher.
The Science Commons licenses are the best by far in acknowledging that an author may be subject to license terms made prior to the transfer of copyright. All three stipulate that any non-exclusive grants of copyright rights to the author's employing institution or funding agency made prior to the transfer of copyright to the publisher are still valid. This protects authors from any warranty clauses that may exist in the transfer agreement with the publisher. There is no limitation on the scope of rights that the author can give to his institution or funding agency other than that they be non-exclusive. The special grant of rights to the author's institution or funding agency must have taken place prior to the transfer of copyright to the publisher. After the transfer takes place, the institution or funding agency has no more rights than any other user, and the terms in Table 2 would apply.
The MIT Amendment also singles out the employing institution for special treatment. It allows the author to grant his employing institution the right to use the work "in connection with teaching, digital repositories, conference presentations, lectures, other scholarly works, and all academic and professional activities." There is no requirement that these uses be limited to non-commercial activity, and the ability of the author to grant these rights extends even after the transfer of copyright to the publisher takes place. The MIT Amendment's focus on the "employing institution" could be a source of some confusion in the future, however. A faculty member who left MIT for Cornell, for example, should under the MIT Amendment be able to authorize use at Cornell of an article written by the author while she was at MIT (since Cornell is now her employing institution). She may not, however, be able to authorize any new uses of the work at MIT, the institution that originally supported the work. The MIT Amendment is silent on any special rights for funding agencies.
The SPARC Addenda is silent on the issue of special rights for the author's institution or funding agency. In the absence of specific language, each would be treated like any other user according to the terms found in Table 2. By not recognizing that prior licenses may have occurred, it also leaves the author open to charges of violating boilerplate warranties about exclusivity that may be found in the copyright transfer agreement.
Table 4: Institutional and Repository Rights
Table 4 addresses a special category of institutional and funding agency rights: namely, the ability of authors to deposit copies of articles in institutional or subject based open access repositories, such as DSpace or PubMed Central. Only SC2 distinguishes between preprints (versions of articles prior to refereeing and acceptance) and post-prints (versions of articles incorporating the changes made as a result of journal review and acceptance) and stipulates that an author can distribute either from a non-commercial web site. It is possible to read between the lines of the other addenda, however, to see how they address the issue of whether preprints can be posted to preprint servers. The MIT Amendment would seem to limit preprints to personal websites; SC1 and SPARC would seem to allow authors to post their articles to personal, institutional, or open access web sites for non-commercial purposes. Both require that the postings of preprints be in support of the author's academic and professional activities. SC3 speaks only of the post-print version of the paper, and so an author using this addendum only has clear authority to distribute that version (though an author could use her rights described in Table 3 to post a pre-print to an institutional repository but not a subject repository).
All of the addenda allow the posting of the post-print version of the article on a personal, institutional, or open access web server, i.e., "the version of the paper after peer-review, with revisions having been made" . SC3 has an important caveat: the published version of articles may not be posted any earlier than six months after publication.
What about the article as published by the publisher? Does the author have the right to distribute the publisher's PDF version of the article? SPARC, SC2, and SC3 all stipulate that authors can distribute the published version of the article. SPARC states explicitly that it can be the publisher's PDF. SC2 and SC3 define the "published version" to mean the "the version of the Article distributed by Publisher to subscribers or readers of the Journal." The MIT Amendment states that once an article has been published, the author has the right to make "the final published version of the Article available in digital form," but does not make clear whether by final published version they mean the post-print manuscript or the actual PDF or HTML document as published.
Even if we assume that MIT, SC2, and SC3 allow authors to post the PDF version of an article as published by the publisher, authors face a problem on how to legally acquire the PDF. SPARC is the clearest on this: the publisher must supply the author with a PDF copy of an article within fourteen days of publication. An author using the SC2 or SC3 addendum presumably could use an electronic copy received as part of a subscription to the journal or even scan a printed copy and distribute the scans.
A problem could arise, however, if authors attempted to distribute from a web site the version of the article taken from one of the databases that are often licensed by libraries for campus use. Many of these databases consist of content from a number of publishers that has been aggregated by a vendor, and the library signs a license agreement not with the publishers but with the aggregator. It is quite possible that while downloading and then distributing a copy of an article from an aggregator's database would not be a copyright violation (since an addendum could give the author that right), it might still be a violation of the terms and conditions associated with the use of the database and could leave the faculty member and/or the university open to a possible contract infringement suit by the aggregator.
What Is Missing from the Addenda?
Any of these addenda would offer authors rights that they may not have in the standard publication agreement. Nevertheless, there are important lacunae in all of them.
For example, none of these addenda explicitly address the rights of third parties in general to use the material once copyright has been transferred to the publisher. The MIT amendment is particularly noteworthy in this regard it ensures that people at MIT can use articles in their teaching and research, but the amendment does not consider at all similar uses by the larger scholarly and educational communities.
Creative Commons licenses  are becoming a standardized means to stipulate what rights the author thinks a third party should have to be able to use the article without having to ask permission. It would have been possible to include in the SC1 and SPARC addenda that the articles are being published under a Creative Commons Attribution-Noncommercial license, and that this notice should appear in the article. Rather than specifying the extent of user rights in the transfer agreement, the addenda leave it up to the authors to decide on a case-by-case basis whether the author wishes to authorize non-commercial use on an attribution basis. To their credit, however, they at least give the author the option of granting the rights found in the Creative Commons Attribution-Noncommercial license.
In addition, while each of the addenda allow authors to distribute articles from institutional or subject repositories, none of them give explicit permission to authors to grant to those repositories the rights they need in order to be able to preserve the articles over time. Each repository will need to make backup copies of the articles, migrate the content of the articles over time (as current file formats become obsolete), and in some cases allow users to select from a variety of file formats. The standard DSpace installation includes a license in which the author authorizes the DSpace repository to make these preservation copies, but none of the addenda under discussion explicitly gives the author the authority to sign such a license after a copyright transfer has been made. And it is unclear if the terms of the addenda will map perfectly to the terms of the repository deposit agreement.
Lastly, some of these addenda are highly technology specific. The SC2 and SC3 addenda, for example, state that the author can distribute copies of an article "by means of any web server from which members of the general public can download copies without charge." Web servers are the distribution technology of today, but fifteen years ago the solution would have been a Gopher server or Anonymous FTP indexed by Archie. There is no assurance that fifteen years hence, web servers (or even the Internet) will be the preferred form of author-based distribution.
Which Addendum to Use?
Which of these addenda should authors seek to employ?
First, rather than using any addenda, authors should consider retaining copyright and giving the publisher instead an exclusive license for first publication. A recent British survey of scientific publishers indicated that 39% of publishers do not require authors to transfer copyrights in order to publish . Retaining copyright and only licensing to the publishers those rights the publisher needs in order to publish and manage an article is clearly the solution that is in the author's interest .
It would be nice to know if publishers are willing to accept any of these addenda, or if there is one that most publishers preferred. Unfortunately, all of these addenda are so new that there is no evidence as to which, if any, of them are acceptable to publishers (though Science Commons hopes to collect such data). Anecdotal evidence from Cornell seems to be indicating that the SPARC addendum's requirement that the publisher provide a PDF within two weeks of publication is enough of a managerial headache that publishers are refusing to accept the addenda but this is based on a very small number of cases.
In the absence of any hard data on which addenda is the most acceptable to publishers, it makes sense for authors to seek to have the most control possible over the use of their materials. The analysis conducted for this paper would suggest that the SC1 addendum is the solution that would provide the greatest flexibility to authors while at the same time possibly being acceptable to publishers. On the other hand, SPARC recently launched a major education initiative entitled "Author Rights" centered on its addendum . It may be that the visibility of SPARC's campaign will force publishers to accept the SPARC addendum even though this analysis suggests that SC1 offers authors slightly more protections.
What if the Publisher Rejects the Author Addendum?Here are some good suggestions from SPARC :
Summary and Recommendations
While not perfect, author addenda can be an important tool that authors can use to retain the rights they want or that their employing institutions request that they retain. They can be an important component in ensuring open access to articles from either an institutional or a subject repository. The Scholar's Copyright addenda can also provide legal protection to authors who have contributed preprints to such repositories and then do not notice that the contract they sign with the publisher asks them to guarantee that the publisher will be able to exercise exclusive rights in the work.
Of the addenda analyzed, SC1, the Scholar's Copyright OpenAccess-CreativeCommons 1.0 Addendum, provides the greatest benefit to authors. In the absence of data on acceptance by publishers, authors may wish to submit it to the publishers along with the publisher's copyright transfer agreement. Publishers should as well indicate to authors which addenda they will accept or indicate in their copyright transfer agreements which addendum's terms have been incorporated into the agreement. Finally the sponsors of addenda should stop issuing their own custom versions of the documents, which legal departments at publishers must then analyze on a case-by-case basis, but instead sponsors should agree on a few standard addenda that all can use.
I thank John Saylor and Thinh Nguyen for their advice and support of this project, though the opinions, findings, conclusions, and mistakes found in this article are mine alone. The author is not a lawyer, and his analysis of author addenda, which are contracts, is for informational and educational purposes only and should not be taken as legal advice. Authors who wish legal advice on the exact rights they have under a copyright transfer agreement and/or an addendum to that agreement should consult with a lawyer.
 Copyright Management: Policy and Guidelines for Management and Marketing of Copyrighted Works, <http://www.utsystem.edu/OGC/intellectualproperty/copymgt.htm>.
 Other changes made by OhioLINK to the MIT Amendment include dropping the ability of authors to make the final published version of works available and increasing the rights granted to employing institutions by allowing them to use the work outside the confines of the employing institution. In addition, the OhioLINK template includes as optional two provisions found in the SPARC addendum: the requirement that the publisher provide a PDF of the article as published within fourteen days of publication, and language stipulating the acceptance of the terms of the agreement by the publisher.
 My definition of pre-print and post-print follows the SHERPA/RoMEO project. See <http://www.sherpa.ac.uk/romeoinfo.html#prepostprints>.
 Cox, J. and Cox, L, "Scholarly Publishing Practice: Academic journal publishers' policies and practices in online publishing. Second Survey, 2005, Executive Summary." (pp.3-4) Worthing, West Sussex: ALPSP (Association of Learned and Professional Society Publishers. <http://www.alpsp.org/publications/SPP2summary.pdf>.
Copyright © 2006 Peter B. Hirtle. This work is licensed under the Creative Commons Attribution-NonCommercial-ShareAlike 2.5 License: http://creativecommons.org/licenses/by-nc-sa/2.5/.