For decades Duke University published an academic journal called Social Science History that was edited by The Social Science History Association. At the time of the dispute, the two were parties to an “Editing and Publishing Agreement,” which provided that:
If you can’t read it, the agreement was for five years and auto-renewed every year until one party provided notice that it “wishes to discontinue its participation in the journal.”
The Social Science History Association gave timely notice that it “wishe[d] to discontinue its participation with Duke University Press in publishing its journal “Social Science History.” Duke responded that, should The Social Science History Association terminate the agreement, in Duke’s opinion Duke would become the owner of the journal:
The Social Science History Association filed a motion for declaratory judgment on the contract, essentially asking for a determination on ownership of the journal.
The court conceded that “if considered in isolation, such language could be interpreted to have the effect posited by Duke.” But, under Michigan law, the court could consider the contract as a whole:
The 1996 agreement clearly indicates that, irrespective of the financial arrangement, plaintiff remained the owner and editor of the content of the journal. The journal was to be published by Duke expressly “on behalf of [plaintiff],” and upon termination of the agreement, ownership of all extant issues, all contracts with third parties relating to extant issues, and all copyrights in extant issues would return to plaintiff. Paragraph six of the agreement expressly reserves to plaintiff “ownership and copyright in all issues of the journal produced by Duke during the lifetime of this Agreement.”
… [H]aving considered the contract as a whole, including the clearly expressed intent that the rights to the journal and its contents remain with plaintiff, the above-referenced language is properly interpreted to refer to either party’s intent to withdraw from participation in the terms of the agreement, without effect on plaintiff’s ownership of the journal.
It is odd language for a termination provision, but the express statement that the Association was and would remain the owner of all the copyrights in the journal after termination is a hard provision to get around.
The next question after copyright, though, is who owns the the title of the journal? The Association indeed made a claim for trademark infringement, but Duke stated that it had “no immediate intention of publishing a journal under the name Social Science History in 2014.” Therefore “plaintiff has presented no evidence that Duke is currently engaged in use of its mark, and in this posture plaintiff’s trademark claim for false designation of origin is not ripe as there is no live issue currently before the Court.”
Social Science History Ass’n v. Duke Univ., No. 5:13-CV-157-BO (E.D.N.C. July 11, 2014).
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