Estate Planning and Digital Publishing Rights for Authors

When dealing with a person’s incapacity or death, the family members and fiduciaries should consider the value of the person’s digital intellectual property. If the person was an author, family members and fiduciaries should review book publishing contracts regarding digital publishing provisions, especially with the increasing popularity of e–book readers like the Kindle, Nook, and iPad. Traditional paper books have to be printed, stored, shipped, and displayed in a store—older books are pushed off the shelves to make room for newer books. With e–books, there are essentially none of the traditional economic barriers to offering older publications for sale.

The right to publish a digital version of a book was not explicitly mentioned in publishing contracts until about 1995 (link). Most publishing companies insist that they have the right to publish digital versions of books, but some authors or their families are beginning to challenging this position. Recently, the family of William Styron, author of Sophie’s Choice, The Confessions of Nat Turner, and Darkness Visible successfully moved away from Random House to a separate e–book publisher, Open Road, despite Random House’s insistence that it owned the right to publish digital versions of his books (link). On April 25, 2010, The New York Times reported that Random House dropped their claim to the e–book publishing rights for the Styron books, allowing the family to sign an e–book publishing deal with Open Road (link)

It’s possible that Random House settled with the Styron family to avoid having a court battle set a precedent. In 2001, Random House sued Rosetta Books for copyright infringement when Rosetta tried to release e–books of authors who already had exclusive publishing contracts with Random House. One of those authors was William Styron, while he was still alive. The contracts included the exclusive rights for Random House to “print, publish and sell the work in book form.” In considering a request for a preliminary injunction, the federal district court and court of appeals held that “in book form” did not automatically include e–books, and the full record needs to be developed in the course of litigation to decide this mixed question of law and fact. Random House, Inc. v. Rosetta Books LLC, 150 F.Supp.2d 613 (S.D.N.Y. 2001); Random House, Inc. v. Rosetta Books LLC, 283 F.3d 490 (2nd Cir. 2002). The federal district court opinion quoted from Random House Webster’s Unabridged Dictionary definition of a “book” as “a written or printed work of fiction or nonfiction, usually on sheets of paper fastened or bound together within covers” and definition of “form” as “external appearance of a clearly defined area, as distinguished from color or material; the shape of a thing or person.” Ultimately, this case was settled before it went to trial.

So, if you are working with an author or an author’s estate with one of these older publishing contracts, you should consider the options available for e–book publishing rights.

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