Rights

Author: Hans-Jürgen Schwarz

Making documents openly accessible in repositories

A question which both authors and repository operators are frequently obliged to ask themselves is whether it is permissible to make a particular document openly accessible in a repository. Fortunately, the answer to this question is often an unequivocal ¨Yes!¨. Nowadays, most publishers have no objections to their authors' depositing a preprint or postprint of their article in an open access repository, a process which is referred to as self-archiving. The SHERPA/RoMEO listings provide details of publishers' self-archiving policies. It is fairly unlikely that publishers who do not allow self-archiving of the preprint or postprint version would take legal steps against one of their authors to have the document deleted. However, to be on the safe side from a legal point of view, it is advisable to check on a case-by-case basis whether there are any legal impediments to self-archiving. The following material is intended to provide an overview of the legal aspects which must be considered in each case.

May I make contributions which I have published in a newspaper publicly accessible in my institution's repository, in a subject-based repository, or on my personal website?

As a rule, when an article is published in a newspaper, the author grants the publisher only non-exclusive rights of use. In this case, he or she may otherwise distribute it immediately after it appears. In other cases, Section 38 (3) of the German Copyright Act (UrhG) applies:

Section 38 (3) UrhG: If a contribution is made available to a newspaper, the publisher or editor shall be deemed to have acquired a non-exclusive right of use, unless otherwise agreed. If the author grants an exclusive right of use, he shall be entitled, immediately after the appearance of the contribution, to otherwise reproduce and distribute the work, unless otherwise agreed. Legal experts are in disagreement as to whether the wording "reproduce and distribute" in paragraph (3) above refers only to distribution in physical form or whether it includes also the right to make the work publicly accessible on a wired or wireless basis within the meaning of Section 19a UrhG, which right is a prerequisite to online distribution. Therefore the only thing about which there is no doubt is that the right to reprint the work passes to the author. The German library-law expert Eric Steinhauer takes the view that, in the absence of an explicit publishing agreement, the right to make the work publicly accessible cannot be deemed to have been automatically granted: "Insofar as an author makes a contribution available to a publisher for publication in a journal or a festschrift without concluding a specific agreement, the publisher cannot be deemed to have acquired also the right to make the work publicly accessible [online]" (Steinhauer, 2006). From this it follows that, in the absence of an explicit contractual agreement, the publisher did not at any stage acquire the right of online distribution in the work. Therefore the author is basically free to distribute the work online or to authorise third parties to do so. However, the legal experts Joern Heckmann and Marc Philipp Weber take a different view. They construe Section 38 UrhG in conjunction with the general principle laid down in Section 31 UrhG that the scope of the usage rights should be determined in accordance with the purpose envisaged when granting the rights, and they conclude that, on the one hand, the publisher also acquires the right to make the work publicly accessible and that, on the other hand, after publication the author acquires only the right of physical distribution in the work. In their opinion, the scope of Section 38 UrhG does not extend to making work accessible online and it cannot, therefore, be invoked to justify self-archiving in parallel with print publication (Heckmann & Weber, 2006, p. 2). The said legal ambiguity notwithstanding, it may still be worthwhile enquiring with your publishers as to whether they would allow you to make the work publicly accessible online in parallel with publication despite the fact that you granted them exclusive rights of use in the work.

May I make an article which I have already published in a journal publicly accessible in my institution's repository, a subject-based repository or on my personal website?

In Germany, the legal basis is Section 38 (1) of the German Copyright Act.

Section 38 UrhG (1): If the author consents to the inclusion of his work in a collection which appears periodically, the publisher or editor shall be deemed in case of doubt to have acquired an exclusive right of reproduction and distribution. However, on expiry of one year from the date of release, the author may otherwise reproduce and distribute the work, unless otherwise agreed. Legal experts are in disagreement as to whether the wording "reproduce and distribute" in paragraph (1) above refers only to distribution in physical form or whether it includes also the right to make the work publicly accessible on a wired or wireless basis within the meaning of Section 19a UrhG, which right is a prerequisite to online distribution. Therefore the only thing about which there is no doubt is that the right to reprint the work passes to the author on expiry of the one-year period. The German library-law expert Eric Steinhauer takes the view that, in the absence of an explicit publishing agreement, the right to make the work publicly accessible cannot be deemed to have been automatically granted: "Insofar as an author makes a contribution available to a publisher for publication in a journal or a festschrift without concluding a specific agreement, the publisher cannot be deemed to have acquired also the right to make the work publicly accessible [online]" (Steinhauer, 2006). From this it follows that, in the absence of an explicit contractual agreement, the publisher did not at any stage acquire the right of online distribution in the work. Therefore the author is basically free to distribute the work online or to authorise third parties to do so. However, the legal experts Joern Heckmann and Marc Philipp Weber take a different view. They construe Section 38 UrhG in conjunction with the general principle laid down in Section 31 UrhG that the scope of the usage rights should be determined in accordance with the purpose envisaged when granting the rights, and they conclude that, on the one hand, the publisher also acquires the right to make the work publicly accessible and that, on the other hand, after one year the author acquires only the right of physical distribution in the work. In their opinion, the scope of Section 38 UrhG does not extend to making work accessible online and it cannot, therefore, be invoked to justify self-archiving in parallel with print publication (Heckmann & Weber, 2006, p. 2). The said legal ambiguity notwithstanding, it may still be worthwhile enquiring with your publishers as to whether they would allow you to make the work accessible online after publication despite the fact that you granted them exclusive rights of use in the work.

What possibilities are there to make monographs openly accessible?

Monographs and collective volumes can be self-archived in institutional or subject-based repositories or published in open access with university presses who have an OA policy. While institutional repositories and university presses usually accept only the works of their own members, subject-based repositories impose no such restrictions. The institutions' websites usually provide comprehensive support for authors. Whether it is legally permissible to make a published monograph openly accessible via a repository depends on the rights which you, as the author, granted to the publisher. You should consult your publishing agreement and/or enquire with the publisher. Some publishers are increasingly well-disposed towards the Open Access idea and consent to the self-archiving of monographs in OA repositories.

When an article is co-authored by several authors, is it enough for one of them to agree to it being made accessible via a repository?

No, it is not. All co-authors must agree to an article being made accessible in a repository and to rights of use being granted to the institution in question. However, if the authors authorise one of their co-authors to speak on behalf of all of them, then this person is entitled to grant rights of use.

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Information on Article 137l of the German Copyright Act (UrhG) - “Retrospective grants of rights of use for online publications”

Notice: With the end of the year 2008, the time limit for the opportunity to lodge an objection against the "automatic process of Article 137l of the Copyright Act" expired. Therefore, the explanations on this page concerning the right of objection were removed.Should you have any queries or suggestions regarding this page, please contact the Open Access Unit of the Max Planck Digital Library: open-access AT mpdl.mpg.de

Information on Article 137l of the German Copyright Act (UrhG) - “Retrospective grants of rights of use for online publications”

• The Second Copyright in the Information Society Act [Zweites Gesetz zur Regelung des Urheberrechts in der Informationsgesellschaft] came into force on January 1, 2008.
• Among other changes, this amendment has made it possible to grant rights to as yet unknown types of use, something that was not previously permitted under German law.
• In the context of this change, Article 137l of the Copyright Act introduced a transitional arrangement for contracts dating from the period from 1966 up to and including 1994. This facilitated the subsequent transfer of rights to unknown types of use to users to whom rights to all known material types of use were assigned under the original contract.
• The opportunity provided for in Article 1371 to lodge an objection to this automatic process expired at the end of the year 2008.

What is covered by Article 137l of the Copyright Act?

• According to the prevailing opinion in the light of German legal precedent, those who use or exploit works, for example publishers, in the case of publications which appeared up to and including 1994 were not generally granted any right of use by the author in respect of electronic publications, since electronic publishing up to and including 1994 is classified as a so-called unknown type of use.
• Article 31, Para. 4 of the German Copyright Act which applied up to December 31, 2007, excluded the granting of rights to unknown types of use.
• This copyright protection was revoked by the Second Copyright in the Information Society Act that came into force on January 1, 2008.
• In order to give users in the simplest way possible the right they previously lacked to publish old material (published during the period from 1966 up to and including 1994) online as well as rights to all other as yet unknown types of use, Article 137l "Transitional rules for new types of use" was duly inserted into the Copyright Act.
• Article 137l of the Copyright Act provides that a user to whom all essential rights of use were granted exclusively and without limitation in territory or time in the context of the original publication should automatically be granted a right of use in respect of new types of use that were unknown at the time the contract was entered into for the initial publication but have since become known.
• Article 137l accordingly applies only if five conditions are fulfilled:

a) The only publications affected are those for which the associated contract with the author was concluded during the period from January 1, 1966 to December 31, 1994. (1)

b) The author must have granted all essential rights of use to the publisher exclusively (2) and without limitation (5) in territory (3) or time (4).

In many cases, for example if no written contract was entered into with the author, this condition is not fulfilled. The rights acquired by the user were merely rights of reproduction and distribution (Article 31 Para. 5 UrhG, "Zweckübertragungstheorie – the theory of transfer for a purpose").

• Article 137l of the Copyright Act afforded the authors concerned the opportunity to halt this automatic process by lodging an objection. This opportunity to object was tied to a one year time limit that expired at the end of 2008.
• The provisions contained in Article 137l affect contracts for the assignment of rights of use that were concluded under German law, in other words in most cases in Germany. Occasional thoughts that Article 137l might also affect contracts that were not agreed to be subject to German law have not been taken up in the relevant specialist literature.
• All types of works protected by copyright are affected.
• It is not unambiguously clear from the wording of the Act whether an automatic grant, that is to say one made without a declaration of intent by the author, of the right to a new type of use that has become known constitutes an exclusive or non-exclusive grant. As yet there is no legal precedent on this issue.
  1. Should the first alternative, an exclusive grant, apply, the author loses the right to this type of use, here online publication, entirely. He or she in this case cannot publish his or her own work elsewhere electronically without the approval of the publisher.
  2. In the case of a non-exclusive grant the right of use is shared, that is to say, the author may grant non-exclusive rights to any number of other third parties in respect of this type of use.

• The automatic process set in motion by Article 137l triggered a widespread initiative in the scientific community in which scientific organizations (the Max Planck Society among them) encouraged their scientists to assign non-exclusive rights to the online publication of scientific material to them before such rights automatically transfer to the publishing houses.

In this context, the question arose as to whether it is permissible to use the original print publications as templates for the creation of digitized versions of these publications.

• Theoretically, in the course of the publication process the manuscript submitted could as a result of the activities of the publisher be supplemented by certain elements which would give the publisher the status of co-author.
• However, this is not usually the case. The layout commonly used for scientific publications is for example not protected by copyright.
• In case of dispute the publishing company must prove a performance protected by copyright.

Wording of the Act

• Transitional rules for new types of use (Article 137l of the German Copyright Act (UrhG))
  1. Should the author have between January 1, 1966, and January 1, 2008 granted all essential rights of use exclusively and without limitation in territory or time to another party, those rights of use unknown at the time the contract was concluded shall also be regarded as having been granted to the other party unless an objection to such use is lodged with the other party by the author. An objection in respect of rights of use that were already known on January 1, 2008 can only be lodged within a period of one year. Moreover, the right of objection shall cease upon the expiry of a period of three months following dispatch by the other party of notification of the intention to proceed with a new type of use of the work, which notification shall be sent to the author at the address last known to the other party. Sentences 1 to 3 shall not apply to rights of use which have meanwhile become known and have already by granted by the author to a third party.
  2. Should all rights of use originally granted to the other party have been assigned to a third party, Para. 1 shall correspondingly apply to the third party. Should the author lodge an objection with the original contracting party, the latter must forthwith furnish the author with all necessary information concerning the third party.
  3. The right of objection pursuant to Paras. 1 and 2 shall not apply if the parties have entered into an express agreement regarding a type of use which has meanwhile become known.
  4. Where multiple works or contributions to works have been amalgamated into a whole which may only reasonably be exploited via the new type of use through the utilization of all of the works or contributions to works, an author may not exercise the right of objection in bad faith.
  5. Should the other party pursuant to Para. 1 proceed with a new type of use of the work which was unknown at the time of entry into contract, the author shall be entitled to separate, reasonable remuneration. § 32, Paras. 2 and 4 of the Copyright Act (UrhG) shall apply correspondingly. The claim may only be asserted via a copyright collection society. Should the contracting party have assigned the right of use to a third party, said third party shall be liable for the remuneration upon commencing the new type of use of the work. Liability on the part of the other party shall lapse.