RE: university press rights assignment

["John Cox" <John.E.Cox@btinternet.com>]

Jim O'Donnell's question is, as ever, perceptive.  But the answer 
has to be in two stages:

1.  If the author contract is a licence to publish, with 
copyright remaining with the author, then the university press 
addendum makes no sense, as it requires the assignment of rights 
for the full term of copyright, whether the title remains in 
print or not.  It is thoughtless and unconscionable.  What is 
required is a simple extension of the right to publish in 
electronic/digital media as well as in print.  In any case, there 
should be a clause, as Jim suggests, that, on the author's 
request, reverts all rights or licences granted to the publisher 
if the work goes out of print - usually if it has not been 
available from the publisher for two years or more.

2.  If the author contract specifically assigns copyright in the 
work to the author - so that it is published "C the publisher" - 
then the addendum is irrelevant, as the publisher already owns 
the copyright. What the author agreement should provide for is 
the reversion of the copyright in the work to the author if the 
work goes out of print, along the lines in 1 above.

There is a practical wrinkle in all of this.  When works were 
published in print, and electronic publishing was in the future, 
it was easy to tell when a work went out of print.  Today, with 
print on demand (POD), and e-book versions being published by 
publishers, books can remain "in print" for many years after the 
printed stock has been exhausted, simply because it is available 
in POD or in digital form.  I am sure that literary agents are 
working on this, and a solution from general publishing will 
drift into the scholarly sphere long before we are in no position 
to care.  One possible solution may be to agree that rights 
revert to the author when royalties generated from sales and due 
to the author fall below an agreed minimum for, say, two 
consecutive years, or the number of copies sold in any format 
fails to reach an agreed minimum over a similar period.

John Cox

Managing Director
John Cox Associates Ltd
Rookwood, Bradden
TOWCESTER, Northants NN12 8ED
United Kingdom
E-mail: John.E.Cox@btinternet.com

<http://www.johncoxassociates.com/>

-----Original Message-----
[mailto:owner-liblicense-l@lists.yale.edu] On Behalf Of James J. O'Donnell
Sent: 14 January 2007 23:46
To: liblicense-l@lists.yale.edu
Subject: university press rights assignment

I have a letter before me from an American University press (not 
one that has published any book I have authored) that asks its 
authors to supplement their existing contracts signed before 1996 
by signing an addendum.  They need some such addendum in order to 
be sure they do have the rights to digital distribution necessary 
if they want to make deals to distribute e-versions through 
Amazon, B&N, Google, and the like.

Here's the text:

"The Author grants and assigns exclusively to the Press for the 
full term of the copyright . . . inclusion in electronic storage 
and retrieval systems; production, publication, and exhibition in 
computer software; and any other rights not specifically 
enumerated in any media and technology now known or hereafter 
invented."

Now the old-fashioned book contracts that many of us have signed 
over the years had a nice out-clause:  if the publisher lets the 
book go out of print and it stays out of print for more than six 
months, then the author has the right to claim back all assigned 
rights just by asking.  I in fact did this with a book I 
published with Oxford University Press in 1992, and the full 
(originally three-volume) work is now available on my website 
free of charge for scholars to use.  (OUP later did turn up 
wanting to reprint it, and discovered they had to ask *my* 
permission, which I was happy to give.)

But this addendum essentially signs away the farm forever (ok, 
life plus 75 years, but I regard a date falling somewhere at or 
with luck after the turn of the *next* century as forever from 
now for me) -- all electronic rights in any medium now known or 
to be invented between now and c. 2100 AD, in perpetuity, 
exclusively to a Press whose own corporate and physical survival 
to that date is *scarcely* guaranteed.

This seems to me to give a *lot* more to publishers than they've 
had.  I'd like to hear suggestions as to what a reasonable such 
addendum might be like -- give publishers enough to let them make 
a business plan for e-versions while retaining useful rights for 
authors.  Progress in that direction is occurring in other areas 
such as journal articles:  how now to get the best arrangement 
here?

Jim O'Donnell
Georgetown University