This decision by the United States Court of Appeals, Second Circuit, [New York] provides “fair warning” to an author submitting a writing to a newspaper, solicited or otherwise, that if compensated is expected upon its acceptance, the author must make certain that this condition is communicated to the newspaper and the publisher agrees the payment will be made before the item is published.

The Plaintiff [Author] in this lawsuit alleged that the Buffalo News, Inc. [Buffalo News]  infringed on Author’s copyright by publishing an opinion piece Author wrote “without authorization.”

Simply put, a plaintiff litigating a claim alleging copyright infringement must show that he or she possessed a valid copyright and that the defendant copied or distributed his or her copyrighted work without appropriate and necessary authorization.

Here there was no dispute that Author has a valid copyright for the unsolicited article he submitted to the Buffalo News. The issue before the court was whether Author’s complaint alleged sufficient facts to show that the publication of the article by the Buffalo News was not authorized by Author.

According to the decision, Author submitted an article to Buffalo News via email, transmitting it with a short message describing the piece, but with no mention of any expectation of compensation upon its publication. A Buffalo News editor responded to Author a week or so  later, stating: “I think I’ll have a spot for this in our Sunday Viewpoints section ….” Author replied immediately, succinctly stating “Great. Thanks.”

Buffalo News published the article in its “Sunday Viewpoints section” whereupon Author sent the newspaper an invoice demanding payment for the item. It should be noted that at no point prior to publication did Author demand payment or suggest that there were any restrictions on the publication of the article. These omissions proved to be a critical element in court’s resolution of Author’s complaint.

In the words of the court, “[t]he import of [Author’s] correspondence with Buffalo News is that [Author] authorized Buffalo News to publish his article. By sending the article to the editor and by responding affirmatively (and without qualification) to the editor’s statement of intention to publish it … [Author] granted to Buffalo News a nonexclusive license authorizing publication, ” as “[N]onexclusive licenses may . . . be implied from conduct.”

Had Author wished to impose a condition on his authorization to publish such as being paid for his efforts, the court said that “it was incumbent on him to say so prior to the publication” of the work.

The court found that the newspaper had published Author’s article in reliance on Author’s “unconditional authorization” and Author could not impose payment as a condition to publishing a  work that had already been published by making a retroactive demand for payment. Accordingly, Circuit Court of Appeals ruled that the district court properly dismissed Author’s complaint for failure to state a claim of copyright infringement.

Author also attempted to amend his complaint by allegations that Buffalo News, in addition to publishing his article in its print edition, also displayed his article on its website for more than six months after its publication in the newspaper.

Concluding that the exchanged email correspondence clearly established that Author had granted Buffalo News a nonexclusive license to publish his article, the Circuit Court explained that the relevant issue with respect to the online publication of the item is whether such publication was within the scope of that nonexclusive license. Further, said the court, when the copyright holder has licensed the alleged infringer to publish the work, the copyright holder bears the burden of showing that the challenged publication, in whole or in part, was beyond the scope of the license granted by the copyright holder. The court found that Author’s amended complaint did not allege facts sufficient to support a  conclusion that Author had limited the scope of the license to a one-time print publication.

Another element considered by the court in its consideration of this litigation was that Buffalo News had offered to remove Author’s work from its website. However Author did not respond to this offer but merely renewed his demand for payment. This silence on the part of Author was viewed by the court as a rejection of the newspaper’s offer to remove the item from its website and, as a result, the Circuit Court opined that Author failed to assert a valid claim that the continued display on the website constituted “copyright infringement.”

The lesson here is that unless your submission for publication is in response to a statement or solicitation that clearly indicates “payment upon acceptance” or “payment upon publication” or a similar statement indicating that payment will be made, never assume that you will compensated for your work unless you state that you expect payment for your with your submission or upon your acknowledgment of a notice that it has been accepted for publication and the publisher confirms in writing that such payment will be made.

For those interested, the United States Circuit Court’s opinion is posted HERE.

Harvey Randall formerly served as Principal Attorney, New York State Department of Civil Service. He also served as Director of Personnel for the State University of New York system and as Director of Research, Governor’s Office of Employee Relations. He has an MPA from the Maxwell School, Syracuse University and a J.D. from Albany Law School. Randall maintains a law blog of the same name focusing on New York Public Personnel Law.