License for using a published scale
Case text (Anonymised)
A researcher has published a paper in our journal using a scale published in 2008. She wrote to the scale developer in 2014/2015 at least three times (emails are on file) before the start of the project, but the scale developer did not respond despite repeated email reminders. No indication of the need for a license was received. In 2017, when the researcher published the paper using the above scale, she was contacted by a person claiming that he was representing the scale's developer and asked for a retrospective license and license fee, and threatened that if the she did not apply for a retrospective license and pay the license fee, she may need to take legal responsibility and retract the published paper. He also said that if she does not pay the fee, then the team’s lawyer would contact her. The name of the lawyer is given, with a gmail account. No firm name or any other information is provided. The researcher has searched the internet and found examples of this person asking other people to apply for a retrospective license and receiving money.
Eventually an email from the scale developer was received, asking the researcher to comply with what his 'chief investigator' is requesting. Thinking that this might be a scam, the case was presented to the dean of the faculty where the scale developer was based. The response from the dean was that ''I am saddened to learn about what has occurred. Our institution does not hold this license and does not support the actions the scale developer is taking''. The scale was published in 2008 and its development was funded with public funding. The scale was modified from the original scale, which was published in 1986 and its development was also publicly funded. These two scales are in the public domain.
A number of people have paid a fee, often variable and often in the many thousands of dollars. Some institutions have decided to retract the article instead. The team is using bullying and aggressive tactics to persuade the researchers to pay the fee (they have not told the researcher in question what the fee is yet, but through the internet blogs this seems to be a very variable amount). They have also sent emails to the president of the researcher’s university, deputy president and vice president for research, as well as to our journal where the paper is published. They are sending 3-4 threatening emails per day (although this seems to have stopped after a couple of weeks).
Question(s) for the COPE Forum
· What do I do as an editor? Do I ask the author to produce a license, or otherwise we will need to retract the article? The author has applied for permission to use the publicly available scale three times with no response from the scale’s developer.
· As this scale is publicly available, is this adequate for someone to use it with the appropriate acknowledgement/reference? There was no mention this was a licensed material in the publications.
The Forum noted that generally, if scales are in the public domain, and there is no explicit licensing information, they are published with the intention that other scholars will use them. The advice to the editor was to consider obtaining legal advice from its publisher, or getting the lawyers from the publisher involved. Retracting the paper would be unfortunate, as this would unfairly penalise the author. If the editor does not have a legal representative, they could ask for help form the author's institution.
One option might be to publish an erratum, with an acknowledgement of the scale developer and with details of the scale. Perhaps if the scale developer just wants some form of credit, this may be a solution to preventing legal action.
Another possible solution could be that if the institution where the scale was developed has confirmed that the scale is in the public domain (ie, it can be reused without paying a licence fee), then the author could ask the institution for an official letter to that effect which they can forward to the team claiming a licence fee or threatening legal action against the author. Perhaps this might deter the team from sending any more emails.
It may be helpful to distinguish the author's responsibility from the publisher's responsibility with regard to the legal threat from the scale author. This is a separate issue from whether it is ethical to require a license for the use of a scale, but it can help to define the editor's responsibility. It might be useful to find out the legal claims and determine exactly what is required by the license (for example, is it use of the scale, reporting of the scale, etc).
The author withdrew the paper. The journal considers the case closed.