Does an e-book edition mean that my book never goes out of print and rights don’t revert to me?

Q. Both my publishers are telling me that my books will never go out of print because electronic and print-on-demand editions will always be available. Is there any way to deal with these claims?

A. You raise an important question. The subject is likely to remain a contentious one and will probably be resolved only after several definitive and consistent decisions are reached in future lawsuits involving the issue.

Assuming that a contract does not specifically grant e-book rights to the publisher, the decisions in those lawsuits will largely depend on the specific language in each contract’s “out of print” clause. If, as the Authors Guild has been advising members for at least the past 35 years, your contracts specifically say that “in print” is based solely on the sale of hardcover and paperback editions, you don’t need to worry about e-books being a factor and even the most recalcitrant publisher should agree. If you also included language long recommended by the Guild that copies produced “by reprographic processes such as Xerox” are excluded for in-print determinations, a publisher is unlikely to have much success claiming that POD copies should be included since both photocopies and POD are single-copy on-demand production methods made possible by new technology. Failure to have either of these provisions in your contract, however, in no way means that your publisher is entitled to include e-books or PODs in its in-print calculations. Authors are not required to be prescient when reviewing proposed book contracts.

If your out-of-print clause has the very broad language widely used 20-30 years ago, viz., that the book is out of print “when the Work is no longer available for sale” — without any criteria for determining availability — it may be tougher to convince obstinate publishers. But your position is no less meritorious, especially if your contract is from that time period. Here, it will be important to argue that since the publisher had no right to print e-book or POD editions in the first place, sales of those editions cannot rightly be considered proof under your contract that a book is in print.

In both situations, your case will be even stronger if your contract has the fairly standard “reservation of rights” clause that all well-advised authors should have in their contracts and which virtually no publisher has ever objected to, viz., “All rights in the Work not specifically granted in this Agreement to the Publisher are reserved to the Author.”

There are many other types of out-of-print clauses, most of them narrower in scope than the broad “no longer available for sale.” The specific criteria typically listed in those clauses, combined with the points mentioned above, may help you in negotiations with your publishers. Unfortunately, even many of these narrower definitions of out-of-print may not suffice to convince a publisher that you are right (nor clear enough for the publisher to convince you that it is right). This is because it is rare for contracts of any sort to provide specific exclusions for technologies not yet invented. Virtually all of these contracts were drafted by publishers, however, and any vagueness or ambiguity in them should be resolved against the draftsman, a concept often found in court decisions involving a broad variety of contracts.

Because this issue is such a common and important one, it would be good if authors with the same publisher and the same language in their contracts, or with different publishers but where the language in their contracts is the same, got together to share costs and hired a top-notch litigator to bring the case, or some organization did so on their behalf.

In any event, if you believe your book is out of print and your publisher says it isn’t because it has (or intends to) license an e-book edition or because an online, POD or e-book edition is available through Google Book Search or another site, you should promptly give a written out-of-print notice to your publisher. Be sure to carefully follow the procedures outlined in your contract’s out-of-print clause. Sending that notice will start the clock running on the time period in that clause. Delay in sending the notice helps only the publisher since it risks nothing by taking no action while “considering” the issue or stalling you.

State in that notice—which typically requires a demand that the publisher put the book back in print itself or via a licensee—that an e-book or POD edition will not satisfy that requirement. Also consider stating, after consultation with your lawyer, that if the publisher attempts to sell or license any such edition, or print any version whatever after the termination of the 6- or 12-month period specified in your contract’s out-of-print clause without having properly put the book back in print before that deadline or licensing it by that date, you explicitly reserve the right to exercise all rights available to you under law and will hold it liable for all damages that result if it publishes the book without authorization. Add that your remedies will include the right to injunctive relief and that those damages will include statutory damages under the copyright law.

Crucial to determining whether sales of e-books (or PODs) should be included in determining whether your books are out of print, however, is determining whether your publisher has the right to publish or license e-book (or POD) editions. Given your question, I have assumed in this answer that your contract does not specifically grant these rights (which, of course, may not stop some publishers from claiming otherwise). If your publisher clearly has those rights, then unless you had the foresight to include some sophisticated provisions in your contract, you likely have no good argument. But if your contract is one of the older ones where publishers were simply granted the right to publish books “in book form,” you are right to contend that it did not get e-book rights too. Although decided under circumstances that may limit its use as conclusive precedent, Random House v. Rosetta Books LLC, a 2001 case available online, is strong support for this view.

A final note: When signing any new contracts, try to include provisions that will enable you to regain the rights to traditional print editions of your book even while the publisher or its licensee retains the e-book rights if the latter are what keeps the book “in print.” How to do this is too lengthy to explain here. The “Out of Print” chapter in the new edition of my book explains how to do this.

Please note that there are additional differences and similarities between e-book and POD editions that may be relevant to answering your question more completely, but space does not permit discussing those here.

(Originally published in the Summer/Fall 2009 issue of the Authors Guild Bulletin. © Mark L. Levine)

Answers to questions on this site are general in nature only. You should consult a lawyer for information about a particular situation. For more information about book publishing contracts and issues, see Levine’s book.

Are print-on-demand books considered print-on-paper or electronic editions?

Q. Are print-on-demand books considered print-on-paper or electronic editions?

A. They are generally considered print-on-paper (“POP”) books, but there are arguments on both sides.

Favoring their treatment as electronic editions: until the time of actual purchase, they exist only as an electronic file and not as a printed book.

Favoring their treatment as print-on-paper editions: the purchaser receives a print-on-paper book, not a file to be read on a computer or other e-device.

To avoid possible future disagreements between you and your publisher, your contract should specify how you and the publisher intend print-on-demand (“POD”) books to be treated. If the two of you agree, they can even be treated differently in different sections of the agreement.

Clauses affected by this decision primarily include grant of rights, royalties, out of print and reversion of rights. If your contract includes — as it should — provisions for separately determining when your e-edition and print-on-paper editions go out of print, you need to avoid confusion about what rights revert to you.

A reversion of POP rights to you will be illusory — and you will not find a traditional publisher interested in bringing out a new edition — if your original publisher, retaining the e-rights after your POP edition goes out of print, can cause a POD edition to be printed whenever someone wants to buy a traditional book. So even if your contract treats PODs as electronic editions for royalty or out-of-print purposes, specify that they are treated as POP copies for grant of rights purposes if POP rights revert to you when the POP edition goes out of print.

(Originally published in the Fall 2011/Winter 2012 issue of the Authors Guild Bulletin. © Mark L. Levine)

Answers to questions on this site are general in nature only. You should consult a lawyer for information about a particular situation. For more information about book publishing contracts and issues, see Levine’s book.

Is there a standard definition of “electronic rights”?

Q. Is there a standard definition of “electronic rights”?

A. No, not for “electronic rights” nor for the many different rights encompassed in that term. (Some contracts use “multimedia rights” instead of “electronic rights,” but there is no agreement on what that term means either.)

Most electronic rights definitions used in publishers’ contracts are too vague or too broad or both. As a result, authors and agents must negotiate appropriate definitions for these subsidiary rights on a case-by-case basis.

Authors should define each electronic right they are granting narrowly and specifically. Properly done, this will enable authors to know precisely what rights they are granting to their book publishers and which they are free to license to software companies, electronics and games companies, apps and educational developers, and other non-book companies in order to exploit non-e-book electronic rights to their work.

If, despite negotiations, the contract you sign with your publisher still contains broader definitions than you’d like, be sure to add a provision that any rights not exercised by your publisher or one of its licensees (as to any language, medium, format or territory) within x years after initial publication of your manuscript (in any form) shall revert to you upon written notice to your publisher. Such a reversion clause should always be included by authors when agented rights (e.g., translations and movie rights) have been granted to the publisher. But it is particularly important when dealing with broad electronic rights clauses because no one—not the publisher, the author or the agent – can anticipate all the possible uses of rights granted in such broad clauses. As recent history suggests, many have yet to be invented.

(Originally published in the Spring 2011 issue of the Authors Guild Bulletin. © Mark L. Levine)

Answers to questions on this site are general in nature only. You should consult a lawyer for information about a particular situation. For more information about book publishing contracts and issues, see Levine’s book.

What kind of hyperlinks can my publisher insert in my e-book?

Q. I’m granting e-book rights, but not other electronic rights, to my publisher and I have been very specific in saying that the publisher can’t make any changes to the text or illustrations. The publisher is insisting on a clause that clearly states it has the right to insert hyperlinks, which makes sense to me since I know a lot of e-book programs allow the reader to click on a word to learn its definition. Is there any reason why I shouldn’t agree to the publisher’s clause?

A. The publisher’s request makes sense but, to protect yourself, you should include provisions covering the following:

  1. The hyperlinks will be added by the publisher and at its expense, and no cost incurred in connection with the hyperlinks will be charged to you.
  2. Publisher will remove, at its expense, any links to which you at any time object.
  3. If any hyperlinks are to a site that result in a transaction by the user and the publisher receives revenue from that transaction, you will be entitled to a percentage of that revenue. This percentage should be specified in the contract.

(Originally published in the Fall 2010/Winter 2011 issue of the Authors Guild Bulletin. © Mark L. Levine)

Answers to questions on this site are general in nature only. You should consult a lawyer for information about a particular situation. For more information about book publishing contracts and issues, see Levine’s book.

What are “derivative rights”? Should I grant them to my publisher?

Q. My publisher just sent me its new contract for my next book. Among the rights I’m being asked to grant are “derivative rights” in my book. The term is not defined in the contract but my editor tells me that it is defined in the copyright law. Is that okay?

A. Definitions are a crucial part of contracts and can be negotiated like everything else. If “derivative rights” are included in the grant of rights, the term should certainly be defined. Unfortunately, the most accurate lay definition I can suggest, and one which is consistent with the copyright law, is “everything under the sun.”

I don’t recommend that any author include “derivative rights” — with or without a proper definition — in the grant of rights section, subsidiary rights section or anywhere else in a contract. It’s as bad as saying you’re granting “all rights” in your work to the publisher. That’s what Murray Burnett and Joan Alison, the authors of the unpublished play Everybody Comes to Rick’s, did in 1942 and, as a result, they were never able to write a sequel or any other work containing the characters that Humphrey Bogart, Ingrid Bergman and Paul Henreid portrayed in Casablanca (as it was retitled). If your publisher wants certain rights (derivative or not), it should specify what each one is, and provide clear definitions. You can then decide which rights to grant and, for those you do, what the appropriate royalties (if the publisher exercises the specified right directly) and subsidiary rights splits (if it intends to license them) should be. You can also decide whether you should have any approval rights for the new work and what the appropriate reversion period should be if the publisher doesn’t exercise them within an agreed-upon time.

Movie rights, dramatizations and translations are traditional examples of derivative rights and are even listed as examples in the term’s definition in the copyright law, viz. “a work based upon one or more preexisting works, such as a … dramatization, fictionalization, motion picture version … or any other form in which a work may be recast, transformed, or adapted.” The definition is broad enough to cover interactive video games, mobile phone “apps” and a host of other derivative works, including ones yet to be invented or even thought of. Just as parents shouldn’t send their children to camp without knowing what activities the camp provides, authors should not license their works without knowing what will happen to them when the rights leave their control.

(Originally published in the Summer 2010 issue of the Authors Guild Bulletin. © Mark L. Levine)

Answers to questions on this site are general in nature only. You should consult a lawyer for information about a particular situation. For more information about book publishing contracts and issues, see Levine’s book.