Sometimes one word makes all the difference. A dispute over a clause in a publishing contract has landed a small scholarly association and the parent institution of a major university press in court, battling over who owns the intellectual rights to the association’s journal.
The dispute pits the Social Science History Association against Duke University and its press, a leading publisher of academic journals. In June 2012, the association told Duke it wanted to end their longstanding agreement for the press to publish the group’s journal, Social Science History.
Duke balked, and in the spring of 2013 the association sued the university for copyright infringement in federal court in North Carolina. Now the fight has even spilled over into the trademark realm, with Duke separately contesting a move by the association to trademark both its name and the name of its journal.
The lawsuit and related trademark dispute are rare examples of a common, often mutually lucrative arrangement—an association contracting with a university press to publish its mainstay journal—gone bitterly wrong. Associations and publishers wrangle over contract terms all the time, but it’s almost unheard of for those disagreements to wind up in court, according to journal editors and publishers.
The opponents have been publishing partners for years, one of many such arrangements the press has with scholarly groups. The Duke press’s journal roster includes Comparative Literature, Ethnohistory, History of Political Economy, Modern Language Quarterly, the Philosophical Review, Radical History Review, and Social Text, among others—nearly 50 journals in all.
Founded in the 1970s, the Social Science History Association has about a thousand members, drawn from history, political science, sociology, and other fields, and united by an interest in “social life and theory, historiography, and historical and social-scientific methodologies.”
The most recent issue of Social Science History gives an indication of the group’s range, with articles on “Googles of the Past: Concordances and Scholarship,” the transformation of the American housing market from 1915 to 1929, and maritime pirates as “escape societies” in late imperial China.
Duke has published Social Science History since the 1980s. In 1996 it signed a new publishing contract with the association. The five-page agreement was good for five years, then would automatically renew every year “until one of the parties provides notice to the other that it wishes to discontinue its participation in the journal.” Note that phrase: “its participation in the journal.” The agreement also stipulates that if it’s discontinued, “all copyrights in all extant issues shall return” to the association.
A Request for Bids
The twists and turns that led from contract to court are detailed in legal filings. In 2011 the association decided to review its publishing options and send a request for proposals to publishers, including Duke, asking for bids to publish Social Science History.
“There had been significant changes in academic publishing since 1996,” said William C. Block, executive director of the association and director of the Cornell Institute for Social and Economic Research at Cornell University. Electronic publishing, which isn’t mentioned in the 1996 Duke contract, had become a major consideration, and “we simply wanted to assess the open market,” Mr. Block said. “We have a great journal—what is it worth?”
(Duke does publish and distribute the journal electronically now; it claims that the association’s actions, such as selecting login names and passwords for association members to read the journal online, amount to consent.)
According to Mr. Block and court filings, the association expected Duke to submit a proposal along with other publishers. It never did. In its brief, Duke admits that it received the request but says “it had no obligation to respond.”
In June 2012, not having gotten a bid from Duke, the association sent the press a letter saying it would be moving on and ending the contract; Duke disputed its right to do that. According to the association, Duke interprets that phrase “participation in the journal” to mean that the association has only two choices: “continue with Duke as the sole publisher in perpetuity or give up its ownership of the journal altogether and allow Duke to continue to publish the journal,” even though the university “has no ownership or intellectual-property rights” in it.
“It’s that particular phrase"—the one about participation—"that’s at issue,” Mr. Block said. “We clearly disagree with that interpretation of the contract.”
Duke agrees that the heart of the case is “the meaning of the language of a contract.” Stephen A. Cohn, director of Duke University Press, said he was unable to comment on the lawsuit, citing university policy. Michael Schoenfeld, Duke’s vice president for public affairs and government relations, confirmed that the university had filed a motion for summary judgment in the lawsuit in early February. “Beyond that we’ll have to decline comment on pending litigation,” he said via email.
The association has also filed a motion seeking summary judgment in its favor. The next round of briefs in the lawsuit is due in early April. It’s not clear yet when the judge will decide on those motions, or if the case will go to trial.
Thomas J. Sugrue, a professor of history and sociology at the University of Pennsylvania and director of the Penn Social Science and Policy Forum, is the association’s current president. He emphasized the group’s intellectual investment in Social Science History, an investment that it could lose if Duke prevailed.
“We have members who’ve worked really hard to build up this journal over the years,” Mr. Sugrue said. “As a longtime member of the SSHA, I want to continue to see our journal thrive and reach current and future audiences of scholars who are interested in the pursuit of important interdisciplinary historical questions.”
Mr. Sugrue sets the case in the context of how much publishing has changed since the agreement with Duke was signed, in 1996, when electronic publishing was still mostly in the future. “The real question at stake for us is the successful publication of our journal,” he said. “To me, that’s the core issue that we’re grappling with here.”
Brand-Name Claims
In a separate but related set of actions, the association has also submitted an application to the U.S. Patent and Trademark Office, seeking to trademark the names “Social Science History Association” and “Social Science History” for itself and its journal. Duke has filed challenges to those applications. The patent office hasn’t ruled yet.
One allegation raised in the lawsuit could give other scholarly groups pause, or at least make them take a hard look at the wording in their contracts with publishers. The Social Science History Association claims that the contested section of the agreement “was drafted by Duke and reflects boilerplate language that Duke inserted in many of its publishing agreements.”
Duke says only that the phrasing “is similar to language that appears in publishing contracts signed by Duke in the time period in which the parties’ contract was signed.” If other associations have run afoul of that language, they haven’t publicized it.
As for the Social Science History Association, “we strongly believe we’ve made every reasonable attempt to settle this dispute,” Mr. Block said. “We’re hoping the fight ends soon.”
Asked what effect a prolonged legal battle might have on the financial health of the association, Mr. Block acknowledged that legal proceedings are expensive.
“What you have is the entire weight of Duke University versus a small, independent academic association of a thousand-some academics from around the world,” Mr. Block said. “The executive committee has considered that carefully and decided to proceed with the lawsuit.”
At stake is a fundamental part of the scholarly group’s identity, Mr. Block said. “We do social-science history. That is our title and our focus.” Social Science History, he said, “is incredibly important to the association.”
Correction (3/13/2014, 10:00 a.m.): The original version of this article incorrectly referred to attempts by the Social Science History Association to patent its name and the name of its journal. The protection sought was in fact a trademark, not a patent. The text has been corrected.