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.