## Facts

- Author Jean George and Harper & Row (HarperCollins’ predecessor) signed a 1971 publishing agreement for *Julie of the Wolves* granting the publisher the exclusive right to publish the work “in book form.”
- The agreement included a provision addressing use of the work in “storage and retrieval and information systems” via “computer ... or other electronic means now known or hereafter invented,” and conditioned certain licenses on the author’s prior written consent.
- The book was published in print beginning in 1972 and later achieved commercial and critical success.
- In 2010, Open Road sought to publish an e-book edition and negotiated directly with the author’s representatives.
- After HarperCollins declined to publish an e-book on the royalty terms proposed, the author entered an agreement with Open Road.
- Open Road released an e-book edition in 2011 without a license from HarperCollins.
- HarperCollins sued Open Road for willful copyright infringement; the parties filed cross-motions for summary judgment.

## Issues

1. Whether the 1971 agreement’s grant to publish “in book form,” together with its electronic-use clause, conveyed to HarperCollins exclusive rights sufficient to authorize and control e-book publication.
2. Whether Open Road’s distribution of an e-book edition without HarperCollins’ authorization constituted copyright infringement.

## Decision

- The court granted HarperCollins’ motion for summary judgment on liability and denied Open Road’s cross-motion.
- The court held the 1971 agreement encompassed electronic book publication, including e-books.
- The court concluded Open Road’s unlicensed e-book release infringed HarperCollins’ rights under the agreement.
- The court relied on the contract’s text and did not deem extrinsic evidence necessary to resolve the dispute.

## Legal Principles

- Under Second Circuit “new use” contract principles, broadly worded grants may cover later-developed technologies when the new use fits within the licensed medium as described, absent express limiting language.
- A grant to publish a work “in book form,” without a print-only limitation, can include electronic book formats.
- A clause addressing electronic or computer-based exploitation “now known or hereafter invented” indicates the parties contemplated later-developed electronic methods.
- A contractual requirement that the publisher obtain the author’s consent before granting certain licenses may confirm the rights are within the publisher’s grant, while limiting sublicensing absent consent, rather than reserving those rights entirely to the author.
- Distribution of an e-book edition without authorization from the holder of the relevant publication rights constitutes copyright infringement.

## Conclusion

The court interpreted a legacy publishing contract to include e-book rights based on a broad “book form” grant and an express electronic-use provision, and it held that Open Road’s unlicensed e-book publication infringed HarperCollins’ rights, warranting summary judgment on liability for HarperCollins.


HarperCollins Publishers LLC v. Open Road Integrated Media, LLP, 7 F. Supp. 3d 363 (S.D.N.Y. 2014)