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Assume a publication agreement between Author (in the US) and Publisher (in the UK, with ample presence in the US), where the rights-granting clause says

Author hereby grants to Publisher the sole and exclusive right and licence to produce and publish and itself further to license the production and publication of the Work or any adaptation or any abridgement of the work in all forms and media and in all languages throughout the world together with the sole and exclusive right to lease to others those volume and specified in clause 11 hereof. Copyright in the Work shall remain the property of the author. The Author hereby asserts his moral rights always to be identified as the author of the Work in accordance to the UK Copyright, Designs and Patents Act 1988

(clause 11 is basically a table of royalties).

Is this effectively different from a transfer of copyright, that is, does Author retain any rights in the work? By granting Publisher the sole and exclusive right to publish, sub-license and create derivative works, in what way does Author retain any right to create a derivative work, or to produce (print and distribute) any such derivative work? Potentially, Author could under UK law (moral rights) stop Publisher from creating an unauthorized modification if Author can prove that the modification is “derogatory”, which is undefined and I assume is judged in terms of whether “a reasonable person” would be offended, rather than a proof that the Author would never have approved such a modification.

The agreement is (per a governing-law clause) subject to the exclusive jurisdiction of English courts, and contains an arbitration clause, which specifies that each party shall name an arbitrator, and there is no provision for a tie-breaker / umpire. For the hypothetical, Author desires to create and distribute a derivative work (perhaps a translation). Can Publisher stop / sue Author for exercising his rights under copyright law? Answers supported by actual case law (US or UK) are most desirable.

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  • There’s the right to sue for copyright infringement which is normally the copyright holders right.
    – gnasher729
    Jul 8 at 6:22
  • @gnasher729 An exclusive licensee can also bring suit, I believe. Jul 8 at 14:22

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If that is the whole of the contract the author has not retained many rights. Usually a publication contract will include a termination provision. This is likely to provide that if the work goes out of print (whch the contract normally defines) the author may reclaim the rights. But there seems to be no such provision in this case.

The contract language quoted does not license the right to perform the work. For a novel this would mean the right to read it aloud, possibly not of much value. For a musical or dramatic work, this might be of significant value.

Under 17 USC 203 a US author has the right to cancel all previous licenses and transfers at any time during a period lasting 5 years, and starting 35 years from the granting of the license, or 35 years from initial publication under the license.

17 USC 293 (b) provides that:

(b) Effect of Termination.—Upon the effective date of termination, all rights under this title that were covered by the terminated grants revert to the author, authors, and other persons owning termination interests under clauses (1) and (2) of subsection (a), including those owners who did not join in signing the notice of termination under clause (4) of subsection (a), but with the following limitations:

Subsection (b)(4) providfes that:

A further grant, or agreement to make a further grant, of any right covered by a terminated grant is valid only if it is made after the effective date of the termination. As an exception, however, an agreement for such a further grant may be made between the persons provided by clause (3) of this subsection and the original grantee or such grantee’s successor in title, after the notice of termination has been served as provided by clause (4) of subsection (a).

This would as i understand it, allow the author or the author's heir(s) to reclaim the US rights at least, but only after some 35-40 years, if the proper steps are followed.

Otherwise, I don't see anything the author retains, except the right to collect royalties as specified by the contract.

If the publisher materially breaches the contract (as perhaps by not paying royalties due), the author (or heir or othet successor) might be able to have the contract voided in a suit, and reclaim the rights granted under the contract.

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