AUTHORS: TREAD CAREFULLY BEFORE ASSERTING CLAIMS TO E RIGHTS
In the mid-1990's, most publishers began revising their standard publishing agreements to include electronic publishing rights. Contracts signed prior to that time usually included only the more general right to "print, publish and distribute the work," or the right to "publish the work in book form."
Based on the absence of a specific grant of electronic rights and based on a few court cases which indicate that electronic rights can be granted only by language that specifically refers to those rights, some authors of books covered under pre-electronic era contracts are asserting that they, rather than their publishers, hold the electronic rights in those books. However, before attempting to license electronic rights or self-publish e book editions of their books, authors should consider the following:
In the eyes of at least some publishers, the question of who holds electronic rights under pre-electronic era contracts remains unsettled. Although the district court in the leading case on this issue, Random House v. Rosetta Books, held that a pre-electronic era contract that did not specifically refer to electronic rights could not be read to include those rights, the court's decision was appealed, and the case was ultimately settled without any final resolution of the issue. Other courts have reached decisions similar to those reached by the district court in the Rosetta Books case, and the publishing industry would seem to be in agreement, based on the wholesale movement in the mid-1990's to revise standard house contracts to specifically include electronic rights. However, many publishers still feel (at least in their public pronouncements) that there is room to argue that a pre-electronic era contract which grants the publisher "all book publishing rights" includes electronic rights. Whether a court would buy this argument remains to be seen, but most authors will be hard-pressed to muster the financial resources needed to challenge a publisher that takes this position.
Even if an author is found to have retained electronic rights in his or her book, the print version of the book may include matter for which the author either does not own the copyright or does not have permission to use. For example, if the publisher prepared the cover of the book or prepared or commissioned photos or illustrations for inclusion in the book, the publisher will most likely own the copyright in that material, and will be able to prevent the author from using the material in the author's own e book. Similarly, if the publisher secured permissions from third parties for the use of their material in the print book, those permissions will run in favor of the publisher, and will not extend to any separate e book publication by the author. Even if the author initially obtained those permissions, the permissions most likely do not cover use of the material in an e book, and thus the author will have to get additional permissions or exclude the material from the author's e book.
Most publishing agreements contain a non-compete clause which prohibits the author from publishing or authorizing publication of the work in any manner that might compete with the publisher's sale of its edition of the work. Clearly an e book edition could be expected to compete with sales of the print edition of the work, and thus a publisher could invoke the non-compete clause to stop an author from attempting to publish or license publication of an e book.
Although a publisher's marketing efforts may be slim to nonexistent for a book that was first released more than fifteen years ago, there is still some question as to whether having two separate publishers trying to market two separate editions of the same book is wise. For example, would an e book edition get the same placement and exposure as the publisher's print edition on retailer websites like Amazon.com and BarnesandNoble.com? Will marketing efforts that are not coordinated with one another merely confuse the public, and result in cannibalization of sales of both editions, rather than increasing total sales of the work?
In the final analysis, it may be that neither party can move forward without the other. Publishers who did not have a specific grant of electronic rights, either under the initial contract or by an amendment to that contract, arguably do not have the right to publish an electronic edition of a work. However, an author will most likely be barred from publishing an electronic edition that will compete with a publisher's print edition. Also, an author will not be able to use the publisher's copyrighted material in any electronic edition. Finally, it may be that a single, coordinated marketing effort will be the only effective way to continue to promote the book. Thus it will be in the best interest of both parties to reach agreement as to how to proceed with the publication of an e book edition of the book.