NINC DIGITAL RIGHTS GROUP
RE: Consultation with Elaine P. English, PLLC, on the subject of Harlequin's claims to digital rights
NOTE: When, in her analysis, Elaine, at times, refers to a specific contract by year, that contract is the representative 'model' contract we sent her (please see chart).
Follow up questions from the Group and Elaine's answers
Q. What happens if an author doesn't sign the new agreement with Harlequin for their re-print program? Can they still print them if the books have not reverted to the author?
A. If an author doesn’t sign the new agreement for the re-print program and Harlequin still holds the rights to that book (either because it’s not eligible for reversion or if a reversion request has been made and Harlequin reprints during the 9 or 18 months re-issuing period), then yes, the author’s signature is not needed. Harlequin can go ahead and reissue the book in whatever formats Harlequin has rights to control (as we’ve seen, in most cases, this means any and all formats, including e-books). It is only if the rights have in some way expired, that Harlequin actually needs an author’s signature to move forward.
However, you should look carefully at the new agreement they are asking to be signed. It’s possible that they are offering better terms than would be available under the old contract, and if that’s the case, you should definitely sign the new agreement, because that is the only way to get the better terms.
Q. I signed a contract in 2002 for a multi-book series in one of Harlequin's lines. I would like to use the setting and the characters as background in a new work - a Single Title, longer work - that would not be offered to Harlequin. I've already fulfilled the Option clause by writing more books in this line after this series.
My contract states: Author agrees that during the term of this Agreement, she will not contract to publish or offer for sale, trade or otherwise, any work that is a sequel or prequel to the Work or contains major characters that are in the Work, or any material based on the material in the Work, without first obtaining Publisher's written permission, not to be unreasonably withheld.
In your experience, is Harlequin reasonable? Does Harlequin grant permission of this sort while still retaining rights to the books? I'm sure these books will be part of their reprint program but have not received any information about timeframe. The six year mark for one of these books is coming up soon when I can start that 18 month clock ticking.
A. I have not had any personal experience with asking Harlequin permission to do a book using characters and settings when the contract requires permissions for prequels, sequels and the use of major characters, so I can’t comment on your likelihood of success. Typically these clauses are more narrowly drafted and intended to protect only the work under the original contract from direct competition. If what you’re planning is a more detailed and developed story than would be appropriate for series, then I wouldn’t see that as directly competing. But as I’ve said, I don’t have any experience with Harlequin’s position on this.
Q. About the recommended flat 5 year extension period and the minimum sales number in-print definition. Isn't the problem that under the Reversion clause (for example the1995 thru 2003 contracts) we can NEVER ask for Reversion because once the book is digitized it is always 'for sale'? And until we ask for Reversion (which we never can do as long as there is an ebook 'for sale') the time clock can never start on the 5 year extension (flat or otherwise)?
[my contract states: ...In the event that after the expiry of xxx years from the last date of exercising any of the rights granted within this Agreement, all of the following are or become applicable in respect of the Work, namely the Work is not in print, not for sale and no other rights within this Agreement are being exercised in respect of the Work by Publisher, its Related or Unrelated Licensees, then Author may make written demand to Publisher....]
Doesn't that effectively stop us fully, because if we are never allowed a window to ask for Reversion, how can we ever get to the 9/18 month period or the 5years?
A. As you correctly point out, the books will never be out of print in the 1995 through 2010 contracts, if Harlequin digitizes the book, because the presence of an ebook edition will be sufficient to keep it in print, so long as that ebook edition is available. The assumption is that since it costs the publisher little to maintain an ebook on its database of available titles, there will be little incentive for them to ever take it down.
If they haven’t yet digitized the book, and it otherwise qualifies as being out of print (i.e., not available in any edition), then your reversion of rights request can be made. Of course, Harlequin can easily defeat your request by then digitizing and offering the ebook for sale within the 18 month period available to them after you make your request.
You are correct that the 5-year term limit for extending the contract only applies to situations where the ebook (or other edition) is done AFTER a reversion request.
Q. Given the choice of replacing the 5 year period stipulated in the agreements with a minimum sales number in-print definition, wouldn't the minimum sales number be the best option?
A. If you are offered the opportunity to amend the contract to include the 250 ebook minimum sales provision, I would definitely go for. I’m not sure I would trade it for the 5-year post reversion termination clause. Ideally you’d want both. However, if your book has already been digitized and reversion is not ever likely to be an option for you, then if pressed, I’d trade the 5 year clause (which is meaningless to you in that situation anyway) for the 250 ebook minimum.
Q. Having told Harlequin that I was seeking legal counsel and for them not to change the status quo, am I obligated to cancel that request? If so, does that reset the clock on the 18 months they have to exercise one of their rights?
A. If you sent it a letter requesting a reversion of rights that should be sufficient to trigger the 9 or 18 month period. It runs from the date of your notice (if properly given – see contract for specific instructions as to how it is to be sent). If your telling Harlequin you were seeking legal counsel asked them to hold off on taking action, then you should either end that hold or give them further direction (depending upon how my letter affects your specific situation). But I don’t think that hiatus should, in any way, restart the clock unless you expressly withdrew your request.