Textbook rights reversion: How to get them back
Most publishing contracts are for the life of the copyright, so how could an author ever get their rights back? In her TAA webinar, “A Second Bite at the Apple: Getting Rights in Your Book Back”, Brenda Ulrich, a partner at Archstone Law Group, discussed the role of reversion clauses in a publishing contract, which allow rights in a book to revert to their authors under certain circumstances.
The issue of rights reversion can confound many authors, said Ulrich, especially as it relates to how broad the grant of rights is in any traditional publishing contract. “It’s a very broad, very wide, very long, license,” she said. “You are giving the publisher permission to publish the book, but you are not signing over the book to them forever.”
Ulrich said that it’s really important to try to understand the language in your contract because it will affect your rights in your own work product potentially for decades: “Be very careful before signing a new contract or any amendments to your existing contract because it could mean a much broader grant of rights than your original contract included.”
Before you can determine how to get your rights back and what would be getting reverted, you need to know what’s been granted in the first place, said Ulrich. To do that, look for the “Grant or Transfer of Rights” clause in your contract, which usually appears right at the beginning of the contract on the first page or first paragraph.
She shared three different “Grant or Transfer of Rights” clauses and the various language they can contain, including this first one (bold added):
a. Transfer of Rights. The Author hereby grants, transfers and assigns (sometimes collectively referred to as “transfers) exclusively to the Publisher each and every right in the Work throughout the world, which includes but is not limited to all copyrights (and all renewals, extensions and continuations of copyright) in the Work and in all derivatives or ancillary work or material prepared by the Author and any contribution of the Author to any derivative or ancillary work or material, including the exclusive rights to publish and distribute any such derivative work, materials, and contribution by the Author, in all forms and media now or hereafter known, together with all exclusive rights granted to an author under the copyright laws of the United States, foreign countries, and international copyright conventions and the right to license any of these rights or any part of them to third parties.
The language, “grants, transfers and assigns”, ensures that no matter how it’s characterized, you’ve most definitely made that transfer of rights, she said. The language “each and every right in the Work throughout the world”, ensures that the grant of rights isn’t limited to certain countries or languages, and the language “all derivatives or ancillary work or material prepared by the author” authorizes the publisher to create derivatives, translations, workbooks, etc. derived from your work. The language “right to license any of these rights or any part of them to third parties” allows the publisher to contract with third parties in other countries, to distribute books overseas, to adapt them to make them more relevant for local culture, or to translate them. “Those licenses become a factor in the reversion of rights as well,” she said.
The word “assigned” can create some confusion, said Ulrich, because from a copyright law perspective “assignment” is usually what you would consider a work-for-hire or permanent transfer, where “license” is what you would use for long-term permission. “However, in a publishing contract it’s kind of unusual because it’s precisely because this contract has a later reversion clause that it isn’t a permanent assignment like a work-for-hire would be,” she said.
The reason for such a broad transfer of rights, said Ulrich, is that the publisher wants the freedom to create and sell not just the textbook, but everything else that goes with it, whether you create them or someone else does.
Another example of a “Grant or Transfer of Rights” clause she shared was (bold added):
1. The Author hereby grants to the Publisher during the full term of copyright and all extensions thereof the full and exclusive rights comprised in the copyright of the Work, including any “Supplementary Materials” …and any revised editions, including but not limited to the right, by itself or with others, throughout the world, to print, publish, republish, distribute and transmit the Work and to prepare, publish, distribute and transmit derivative works based theron, in English and in other languages, in all media of expression now known or later developed, and to license or permit others to do so.
The language about “and any revised editions” refers to the fact that reversion rights apply to all editions of the book, not just the first edition, said Ulrich. Also, an important aspect in reversion rights is to determine what is “out of print”, she said, so if you have an older contract that doesn’t have this “all media” language, there’s at least a question of whether the publisher can claim rights to your book in all media.
A third example of the “Grant or Transfer of Rights” she shared (again, bold added), includes:
The Author hereby grants and transfers exclusively to the Publisher, and to its assigns and licensees, all rights of every nature now or hereafter existing in the materials prepared under this Agreement by the Author, alone or in collaboration with others, for the Work or for related materials for the Work. These rights, which shall prevail throughout the world for the duration of the copyright and any renewals and extensions of the copyright, shall include, but not be limited to, the rights to reproduce the Work or portions of it; to prepare derivative works based on the Work; to distribute copies of the Work and derivative works by sale, license, or other transfer of rights of ownership or use; to publish and sell the Work and derivative works in all languages, editions, forms and media; to perform and display the Work publicly; and to license third parties to publish, use, or adapt the Work or derivative works or portions of the Work for sale, distribution, or other use in print or any other form.
The language, “for the duration of the copyright and any renewals and extensions of the copyright” not only specifies the duration of the transfer of rights to the publisher, said Ulrich, but also to what Congress could do to extend the life of the copyright. This is important because if the rights don’t revert during your lifetime, they could revert during the lifetimes of your children or other heirs.
So how does the rights reversion work in conjunction with the grant of rights? Look for a clause that says, “reversion or out of print”. It will look something like this (bold added):
“If the work (and all conversions, adaptations, ancillaries, derivatives, and portions thereof) has been declared out of print in the United States, the Publisher will offer to revert rights to the Work to the Author. If such offer of reversion is made, the Author may within ninety (90) days request the return of rights to the Work and purchase any negatives of the work at cost and the Publisher’s stock at one-half (1/2) the current net price of the Work. Such reversion shall not effect any licenses then in effect, and the Publisher…”
As you can see in this particular clause, the process for rights reversion is a little convoluted, said Ulrich: “It’s not an automatic process, but a conversation that has to happen between the publisher and author.” The language “has been declared out of print” is also problematic, she said: “Rarely is the publisher who rushes to declare a work out of print. More likely the publisher isn’t paying that close of attention to it. So if you wait for the publisher to declare the work out of print you could be waiting a long time. Don’t sit and wait for such a declaration. If you see that your sales have fallen off to basically nothing, or they are not doing new editions, go ahead and ask or request reversion.”
With the above reversion clause, reversion is basically a two-step process, she said:
- Ask the publisher to declare the book out of print.
- Make a formal demand (in writing) to declare the book out of print. “Don’t overthink this letter,” said Ulrich. “Keep it short and to the point. Confirm that they have declared the book out of print and request the reversion of rights, quote the relevant clause of your contract that gives you that right, and include the date of your contract so they can quickly reference it.”
She shared this sample rights reversion request letter:
“Per your email of October 17, 2019, stating that my work is out of print, I hereby request reversion of rights to me in accordance with paragraph #8 of my publishing contract, dated July 12, 1994”
Here is a second example of reversion contract language (bold added):
18. If the Publisher, in its sole discretion decides that the sales of the Work are not sufficiently profitable to keep it “available for purchase” and the Publisher does not, within six months after receipt of a written request from the Author make it available for purchase or contract to make it available for purchase within a reasonable time, all rights granted to the Publisher shall, at the end of the six-month period revert to the Author, subject, however, to any option, license, or contract granted to third parties prior to the date of the reversion…
The language that reads “If the publisher, in its sole discretion…” is not all that helpful a clause, said Ulrich. Neither is “sufficiently profitable” or ”available for purchase”. This contract requires you to include the additional step of asking the publisher to put the book back up for sale first before you can request a reversion of rights, she said.
“Reversion is one of those things that is great in theory but that can be hard to put into place because of all of these obstacles and hoops you have to jump through to get there,” said Ulrich.
However, she said, there are ways that you can improve this process. The best time to do is when you are negotiating your contract: “However, I realize that the last thing you are thinking about when signing a contract on your book is that the book is going to go out of print.”
She recommends two key ways to improve the reversion of rights language:
- Define “out of print” and tie it to actual sales. For example, “…or if sales of the work in any medium have collectively fallen below 500 units each for two consecutive royalty periods.”
- Make the reversion process automatic. For example, “If the book is out of print, rights shall automatically terminate and all rights granted shall revert to the author…”
Assuming you have gotten past the hurdle of the contract language and get the rights reverted back to you, what does that mean? “That you get back the rights in your work, for all editions, and any derivatives you created under the contract,” she said. “What is not reverted is the derivative works you did not create and any production files, although there’s no reason not to ask for them.”
It’s hard to get language for all of the possible variables, said Ulrich, but make sure you are clear in the reversion stage what you are getting back and what you will own once the rights are reverted.
Also keep in mind that before you can ask for your reversion, there may be some things holding it up, she said, including already printed stock they might want to sell off first and any third-party licenses still in effect.
“And there’s one more wrinkle: if there are multiple authors under your contract, you will need to all agree to get the rights reversion, cooperate on making the request, and then decide who owns particular portions of the work once rights are reverted,” she said.
Once you have the rights reverted, said Ulrich, it’s like you never signed the contract. All the rights in the work are yours. You can enter a new publishing contract, self-publish, or assign the rights to someone else (heirs or a third-party).