Can Terms of Use Limit Public Domain Reproduction?

London Street Fiddler 1880
Dear Rich: What if a public domain image is on a site that has its own terms of use restricting what can be done with images from that site? It might be hard for someone to prove that another party who used the photograph came from the contractually limited site, but don't we need to respect contracts? We should respect legally enforceable contracts but we don't think a "terms of use" statement at a website would create such an agreement. We think that the end user must enter into an agreement -- that is, must 'click to agree' or otherwise demonstrate some assent. Recently we posted what public domain expert Steve Fishman had to say about the practice in his excellent public domain guide.
"Many copyright experts believe that licenses imposing copyright-like restriction on how the public may use public domain materials should be legally unenforceable. This is because the federal copyright law prevents people from using contracts to create their own private copyrights. However, almost all courts have ignored the experts and enforced these licenses."

Craigslist Won't Let Me Google Search

Dear Rich: Craigslist just sent out a bunch of cease and desist notices to people who display Google results in their sites using Google's 'custom search engine tool' where the results are craigslist listings. Many of these sites (such as my own site -, did have 'craig' in the name, so I can see where Craigslist could go after that. However, I'm not sure they have grounds for going after search engines. The problem with Craiglist is that they only offer local search, and many people want to find items either nationally, or throughout a state. Going to each Craigslist micro-location url is very cumbersome. I've taken down my site and forwarded the url to, where I've posted part of the cease and desist notice so that my users can see why the site is down. I have over 300 comments on the site already, and everyone is clearly upset that Craigslist is going after us. I'm thinking about putting the site on a new domain. Can URL forwarding can be considered copyright infringement? In answer to your last question, courts have found that forwarding a URL or linking to a URL can be copyright infringement if the person creating the link knew or had reason to know that the link was for unauthorized copying and encouraged it. Even though we don't think you were threatened with copyright infringement -- Craigslist's standard cease and desist letter is based on a breach of the user agreement, not copyright infringement -- we still think the same principles of unauthorized behavior apply. So, If you dont want to get mail from Craigslist attorneys, avoid URL forwarding or linking to mirror sites.
The End User License. We're not sure how cases like yours will resolve in court but we believe Craigslist has a strong argument regarding enforcement of its end user license.  Everyone who joins Craigslist is faced with the screen shown above before joining -- and by clicking "I  Accept" you entered into an enforceable agreement (which Craigslist believes you breached). As you correctly point out, your situation is further weakened by the use of "Craigs" in your site name and domain name. Craigslist's attorneys don't like that because it implies an association or endorsement. We're sorry to report that you may have to rethink your business model.
PS. We've looked at similar Craigslist issues (and examined the end user license) in January and March 2012,

Copyright or Design Patent?

Dear Rich: I was paid to design jewelry for someone's wedding and now I'm afraid the client thinks she owns the design. I'd like to figure out how to best protect so it won't get stolen. Should I get a design patent or a copyright? First, check any written agreements you may have with the client (and yes, electronic agreements count) to be sure you haven't assigned your rights in the design. If you're unsure, review this article and this one, too.
Copyright or design patent? The rights you get with a design patent are considered to be broader or more powerful than a copyright. That's because you don't need to prove that an infringer saw your work and copied it -- all that matters is that the two works are the same. But that advantage may prove more valuable for those designers who can afford to obtain the design patent (as well as to enforce it). The design patent application and filing process can take a year or more and cost one to two thousand dollars. A copyright is automatic -- it exists once you create the work -- and registration, which provides benefits if you need to chase someone, typically takes three to six months and costs approximately $50 to $65. Copyright will last for your life plus 70 years; a design patent lasts for 14 years. In addition, there are many rules for design patents that could disqualify it as an option for you. For example, if your design has been offered for sale or images of it have been published more than a year ago (referred to as the one-year rule), you cannot now file for a design patent. (Note these rules will change on March 16, 2013, when the U.S. moves to a first to file system.) Finally, not all art can be protected under copyright and not all designs are protected under design patent law. Copyright law does not protect functional designs; and the USPTO will not issue design patents for 'surface ornamentation' (that is, two-dimensional illustrations such as drawings). So, if you're only decorating the surface of an object, you may not qualify. Here's more on design patents.

How Much is Paid for Life Story Rights?

Dear Rich: What compensation is typically given to the subject of a life story from the proceeds of the book and/or movie? Do they have rights to receive any? You don't always get paid just because someone creates a book or movie based on your life story. For example, no paychecks were written to Maggie Thatcher, George Bush or Serge Gainsbourg for their recent biopics (all good films btw, though the Dear Rich Staff especially loved Serge's story). If a story is about a public figure and can be told based on public records, existing news articles, and other public facts -- for example, as in this film -- then it's unlikely that the filmmakers will seek rights from the parties depicted in the film. Payments for rights are more likely to be made in films such as The Blind Side involving private figures and for which the cooperation of the depicted parties is required (such agreements are sometimes referred to as Cooperation Agreements, Consulting Agreements, or Life-Rights Agreements). When permission is sought, it is usually to prevent three types of legal claims, right of publicity, defamation, and invasion of privacy. Often these deals permit fictionalization and release the producers from any claimed injuries resulting from how the character is depicted.
How much is paid? According to Dina Appleton's book, Hollywood Dealmaking: Negotiating Talent Agreements, $25,000 to $100,000 is typically paid for TV life story rights, and between $100,000 and $250,000 is paid for motion picture life story rights. Sometimes a fraction of this payment (for example, 10%) is paid as an option and the remainder is only paid if the TV show or film goes into production.
P.S. Check out our previous life-rights post.

Wants to Copyright Public Domain Photos

Mrs. Tibitts (circa 1860)
Dear Rich: I am starting a small business and I want to use some old photos (pre-1923) on my packaging. Two questions:(1) If I purchase a pre-1923 photo and it becomes my physical property, can I copyright the image (even though I didn’t take the picture)? (Essentially, if I am going to print out a bunch of packaging with this image, can I protect it?) (2) I Google-imaged some specific search criteria and several images that I would like to use for my packaging came up. When I clicked on the images I would usually end up on a blog or Flickr. Let’s say the image in question was taken pre-1923 and it is on a person’s blog. Can I still use that image for my packaging? Short answers: (1) No. (2) Yes.
Longer answer (1) Once something's fallen in the public domain as a result of old age (as has all photography published in the U.S. before 1923), it cannot be reclaimed. If you modify a public domain work --  add additional imagery, unique coloration, or anything else arty -- you can claim your combination of old and new. But you will never be able to stop someone from reproducing the underlying public domain image with one possible exception. If you use a public domain image as your product's trademark, you may be able to stop competitors from using the same image on similar goods under trademark law.
Longer answer (2) It doesn't matter if someone "discovers" a public domain work and publishes it at their blog. If it's public domain, anyone can reproduce it. For more on the public domain, check out Steve Fishman's excellent book.

Wants to Reclaim Videogame Rights

Dear Rich: I work in the computer games industry. Years ago (1993) I worked for a company that folded and it's intellectual property (it's back catalogue of games) was purchased by a third publisher/developer that has done nothing with those titles specifically since they acquired them and apparently done nothing at all in the last decade. There is a possibility some of the original people behind those titles (myself and the creator of those games) could do something new with the intellectual property but the current owners seem to be uninterested in any communication (if indeed they are still trading).  In summary, they bought our stuff  when the previous company went down and they have sat on it the last 15 or so years. Can we claim abandonment and take it back? The short answer is "No." We're sorry to hear that your hard work from the past is sitting on a shelf with no support from the new owner (BTW, welcome to the club -- we can't believe the over inflated price on this outdated edition). But there is no legal basis for you to "reclaim" your rights based on the current owner's inactions.
You can "grab" some rights if ... If you had created the games independently and transferred rights to the company, you could reclaim copyright 35 years after the transfer. (Here's more on the 35 year reversion rule.) But that's probably not the case if you're an ex-employee. The original company would own those rights with no right of reversion. Alternatively, anyone (not just you and the other ex-employees) can claim any trademarks (for example, the videogame names) if the current company has stopped exploiting the games and has no apparent intention to resume. (Here's more on trademark abandonment.)
Course of action. If you think there's a chance the games can make some money perhaps the company would be more responsive if you offered them a deal --  for example, you'll grant them a royalty of future revenues. (PS Try to avoid providing an advance to keep your risk factor down.)

Freud and The Public Domain: Second TIme Around

Dear Rich: We know that Freud's works have entered public domain. However, his 'Project for a Scientific Psychology' was not published during his lifetime, but only in 1950. Is it also in the public domain and can it be freely cited? Do we really know that all of Freud's works have entered the public domain? We weren't so sure when we answered a similar question last year, and public domain expert (and author of our favorite PD book) Steve Fishman reported to the Dear Rich Staff that the original German versions of all of Freud's works are public domain in Europe and most other countries. Translations may still be under copyright. In the U.S., Freud's works published before 1923 are all public domain including translations (and available online from Google ). Freud's works first published between 1923-1963 in the U.S. are public domain if not renewed. "Project for a Scientific Psychology" was written in 1895 and remained unpublished until 1950 when it was translated into English. Therefore, the work would be public domain in U.S. if not renewed in 1978. Steve reported that he could find no renewal record for this work which creates the presumption that the work is now public domain.

Can We Do Themed Bento Box Book Using Star Wars, Lego and Snow White?

Dear Rich: I am writing a book about themed-Bento boxes and am getting ready to sign the contract except I'm concerned about  one of the provisions. It says that if I deliver anything that contains "materials produced by another person or taken from another previously published or copyrighted work," I have to get "valid written permission(s) from the proprietors." If I don't do that the Publisher can get the permission and charge me for it. The provision goes on to say that I indemnify the Publisher for any third party claims of infringement. I am planning to include many heavily themed Bento boxes including a Stars Wars box, a Lego shaped box, and a Snow White box. In the Star Wars box, I would include things like a skewer of grapes made to look like a light saber or a Yoda made from apple slices. For the Snow White box, I was thinking that I would use one of those Snow White cookie cutters to make a sandwich, but I could easily skip that part to avoid the Disney reach. The titles for the boxes can be flexible. How does that provision affect what I'm planning to do? We’re very excited about your question because it allows us to use several SEO-busting keywords like “Star Wars,” “Disney,” and “Lego” in our entry (a trifecta for Dear Rich Google Analytics). You've done us a great service, at least until we get dinged by Panda, Penguin, or some other black and white animal Google algorithm. By the way, we’re getting a lot of contract provisions to review these days. We hope that’s a sign that people are getting more contract offers … especially book contracts.
Right, you had a question. Because you're creating a how-to type food book-- not selling themed-Bento boxes -- we don't think you will need trademark permission. Activities like creating and photographing Yoda apple slices or a Snow White shaped sandwich, don't seem to be a trademark problem, especially if you're using a licensed cookie-cutter. (Note that as we speak, Disney lawyers are seeking to register the fairy tale moniker for processed fruit snacks). As for the Lego Bento box, we think an authorized Bento box would be a better choice for your book (versus creating a fake lego box). In general, your use of Disney, Star Wars and Lego, feels like an editorial/informational use (explained in a previous entry). In other words, you're less likely to trigger infringement if you write about or comment on trademarks. What you can't do is imply an association with, or dilute or tarnish these marks, for example, produce a whole Star Wars Bento box book (more Stars Wars recipes, here).
Copyright. You're probably fine reproducing these Bento versions of copyrighted characters without permission. It's possible, though doubtful, that some over-caffeinated general counsel may send a cease and desist claim but nowadays most media-savvy companies shy away from overzealous pursuit of iffy copyright claims (especially claims like these that may be excused by fair use).
Indemnity. Indemnity provisions are really a drag. Under your provision, you must get all necessary permissions and if a third party sues you for infringement, you're on the hook. So, despite our belief that permission may not be necessary, if your publisher disagrees, you'll have to either deal with it (good luck getting permission from this gang), pay for your publisher's permissions, or remove the material upon request by your publisher. Another possibility is that the publisher will be oblivious to the whole issue and nobody will ever complain. We hope that's the case.

She Has Non-Compete in Book Contract

Dear Rich: I have a contract for a book that will contain entries from my website. In addition to my own site, I write a regular freelance column and occasional one-off articles on a certain subject for print and online publications. The freelance work I produce is not identical to what I'm planning to include in the book but there is a lot of overlap in the basic information (suggested lists of supplies, how to use cookie cutters, etc.) Considering the clause, below, that came with the contract, would my own site, my freelance column and my one-off articles be deemed to be competitive? The clause reads as follows:
 NON-COMPETITION. The Author shall not prepare or be concerned in the preparation other than for the Publisher of any work which shall be an expansion or abridgment of the current Work, in whole or in part, or of a nature likely to affect prejudicially sales of the current Work. The Author will consult with Publisher before publishing or producing another work likely to affect prejudicially the sales of the Work herein contracted for.
How long? Our initial concern about this provision -- besides the fact that it doesn't accurately define a competing work, and is written in a funky old-school contract writing style -- is how long the provision can be enforced. Since no time period is mentioned, we assume it's enforceable for the term (time period) of the agreement. We don't know what the term is, but it should be written somewhere in your agreement. In book contracts, it's typically for as long as the book remains in print (see our previous entry) or for the length of copyright. In either case, that's a long time. So, if you have the bargaining power, you might want to put a timer on this one -- for example, to preface the provision by saying, "For a period of one year, following publication of the Work, the Author shall not ....
What's competing? Our second concern is that it doesn't clearly define a competing work. It's no accident that this provision is vague. In the minds of some attorneys, ambiguity increases the breadth of coverage because it makes it possible to threaten and intimidate an author over any type (as long as it will "affect prejudicially sales"or size ("an expansion or abridgment") of work.  An author with some bargaining power would want to limit this to a specific thing -- for example book-length works on the same specific topic. Also, if the contract contains a clause providing a right of first refusal for your next work (the publisher has first dibs on your next book), you should add language saying that if the publisher doesn't want to publish it, that your second book will not be considered a competing work.
Does your other stuff compete? Because the provision is so vague, we can't say whether the publisher will care about your other works and if so, what will the publisher do. If we were a betting blog, we would bet that the publisher probably won't care or do anything. First, they're probably aware that you're the expert on this particular subject and they're aware of your site and your freelance column, so they won't want to put a halt to this type of self-promotion -- it helps the book. Your one-off articles may or may not trigger friction. That depends on who is publishing them and where they are being published. One way to secure your position is to include a mention of the book in any of these efforts as that way you can make a reasonable argument that they are promotional not prejudicial.
Just sayin'. If you speak with one of the editors or publisher reps, you may want to discuss these concerns. The publisher may not change the contract (which will ultimately control what happens) but they may assure you that the provision is rarely enforced.
PS Feel free to send our contracts book to the company's legal counsel.

Wants NDA+ for Taiwanese Manufacturer

Dear Rich: I’m trying to find a triple-N agreement to send to my Taiwan manufacture (NNN = non-disclosure, non-use and non-compete). I am concerned that customers in the Far East will try to get him to manufacture our product directly for them. If we have a good NNN agreement, it will help dissuade him from doing that. Can you direct me to any resources? We've spotted a few of these templates floating around the Internet, but from our research (and limited experience) it's not a good idea to use off-the-shelf NDA-type agreements with foreign manufacturers. The main reason is enforcement: a manufacturer that operates solely in the People's Republic of China (ROC) would only be subject to Taiwanese law and you would need to rely on ROC courts to enforce the agreement. That reduces the chances of enforcing an English-language off-the-shelf agreement -- particularly if you are relying on American style injunctive relief (a hard sell in some Asian courts).  The only way to increase your chance of enforcement is to show the manufacturer that you mean business by preparing a properly translated agreement that caters to the laws of the ROC -- or Peoples' Republic of China (PRC), depending on who is really in control in Taiwan. That means engaging an English speaking lawyer who is familiar with ROC laws. For more information, you may wish to check these two articles: one explains why a Triple-N agreement is the way to go with Chinese manufacturers, and the second explains the common pitfalls when trying to make the agreement enforceable.
An exception .... One exception to the rules expressed above is if the foreign manufacturer has a presence in the U.S. -- for example, there's a U.S. subsidiary or headquarters. In that case, the company is likely to be subject to U.S. jurisdiction and you may be able to enter into a typical template agreement. If you're seeking a basic NDA for various purposes, we've uploaded a collection of agreements with explanations.

Wrong Author Listed on Book

Dear Rich: Is there an issue if my name is on a book by mistake? That's what happened to me. My name was credited for a book that I did not write. I did write one version of the book but they did not use it. There would only be an issue if you or the real author believe that the attribution error resulted in an injury. If you feel, for example, that the mistaken listing defames your reputation, makes use of your name to endorse a product without your permission, or subjects you to emotional distress (or some similar claim), you can pursue the publisher. The real author may have different claims. For example, the contract between author and publisher may have requirements for attribution and this snafu may result in a material breach. Alternatively, the author may claim a false designation under the Lanham Act, or under some circumstances, copyright infringement.  In cases involving famous authors, "errors" like these cause class action lawyers to salivate.

Needs Anatomy Pix for Dissertation

Dear Rich: I'm writing my postgraduate dissertation for surgery and I need to use pictures from the Skandalakis anatomy book, how do I ask for permission or can I use them? Wow, two anatomy questions within six months. (Our last question had to do with public domain imagery like the image, left.) We get seriously sidetracked with these anatomy questions -- is that really where the liver is? Just looking at this cross-section of the digestive tract has us vowing to quit processed cheese.
Right, you had a question. The Skandalakis anatomy book (we assume you're referring to Surgical Anatomy and Technique, by Lee John Skandalakis, John E. Skandalakis, and Panajiotis N. Skandalakis), is published by Springer International, in Germany. Springer explains its permission process at its website. (Note the fairly enlightened explanation of U.S. fair use which may be helpful in your case.) The company supposedly provides a downloadable permission request form on the permissions page but when we clicked it, we were re-directed to the homepage (ist der programmer abpoofen?) Probably your request should go to this Springer employee. But if that doesn't work, this page may provide more guidance. Of course, we explain the process for getting these types of rights in more detail in our permissions book.

Should I Register My Blog Name (or Domain Name)?

Dear Rich: I am planning on starting a blog that I might ultimately turn into a consulting/market research business (though in the beginning, like most bloggers, I will be providing only free articles and research). Since I might ultimately end up doing commerce under my domain name, and since I think the name is nifty and special, I am thinking of trademarking it right away. This raises a few questions: (1) If I am not actually selling anything yet, but merely advertising services or providing free online research services, is that enough for a full trademark, or merely an intent-to-use trademark? (2) Can I establish a trademark even if I don’t have an official business registration? Might this create any problems later on if I want to transfer the trademark from my personal name to that of the business? (3) Should I register the name of the domain or that of the business? If they are the same, does registering for one protect the other? (4) I have the business name and the domain, but I do not yet have a logo. Can I trademark them separately, or should I wait to trademark them all together? Wow, that's a lot of questions. Excuse us while we re-insert our caffeine drip. Answering your questions by number: (1) Yes, offering information is a service; you don't have to make traditional sales to be "in commerce." (2) We're not sure what you mean by "business registration" (we assume you haven't filed a DBA or incorporated or formed an LLC). In any case, it doesn't matter; individuals can register marks. It's easy to transfer from one entity to another, just be sure to notify the USPTO of the assignment. (3) You should register the term that best identifies your services to the public -- which is typically the name of the blog. (Check out our entry about registering blog titles as trademarks.) (4) You should register the blog name or words in standard character format. We don't think there's much sense in registering a stylized version of the name -- especially because you may later change the appearance.  If you have a unique logo that differs from your name, you can register that but that should be a low business priority, at least until the online business is doing well enough to justify the $300+ registration fee.  Here's more info on registering trademarks.

Artist's Rights in Public Mural

Dear Rich: I was hired to do a mural in a San Francisco apartment building. There's no contract and I get a flat fee. I'm being paid by the company that manages the building. Who owns the mural? If you're asking who owns the copyright, we think you own it. If you're asking who owns the mural itself, we think the owner of the building owns it. In other words, you would control the duplication, and distribution of copies of the work and you would have granted an implied license to the building owners to display the work in the apartment house. But wait .... by creating a fine art works you also acquire rights under a federal law, the Visual Artists Rights Act (VARA) and a state law, the California Art Preservation Act (CARA).
VARA. VARA protects an artist's rights in a work of fine art (of less than 200 copies) if it is a painting, drawing, print, or sculpture. The artist acquires the right to prevent the intentional distortion, mutilation, or modification of the work. The rights granted under VARA —known as attribution and integrity—are not transferable. Only the artist can exert these rights. Although copyright protection normally lasts for the life of the author plus 70 years, the rights granted under VARA last only for the life of the artist. That is, once the artist has died, the work can be destroyed under VARA without the destroyer seeking consent from the artist’s estate. If the artwork is created under the terms of a work made for hire agreement, the artist acquires no rights under VARA.
CARA. The California Art Preservation Act provides for civil penalties and injunctive relief for the intentional or grossly negligent destruction or mutilation of a work of fine art, defined in the statute as any original painting, sculpture, or drawing that is of "of recognized quality."Under the California statute (California Civil Code Sections 986-989), for example, an artist is entitled to 5% of the resale of a work of fine art. These rights survive for 20 years after the death of the artist.
CARA + VARA. Both of these laws enable an artist in California to prevent the mutilation or destruction of a commissioned art that becomes a fixture or part of the building. For example, when a building owner painted over a famous L.A. mural without first providing notice as required under California law, the artist sued under the California and federal laws and recovered 1.1 million.
But is it art? At least one court has ruled that in order for VARA to apply, the work at issue must have more than “artistic merit” or “some level of local notoriety”; it must be of “recognized stature” as an artistic work. In that case, the court permitted unauthorized dismantling of a 6,000-pound swan sculpture.

Can I Marry a Corporation?

Dear Rich: The Supreme Court says that corporate entities are the same as people, right? So if that's the case, can I marry a corporation? I have a real crush on one and would like to pop the question. We have a feeling you're kidding but since the Dear Rich staff has a near-empty mailbag, we'll provide an answer anyway. In all 50 states, corporations are free to marry each other but marriage with real people is still taboo. The problem is that when the Supreme Court granted "corporate personhood" to corporations, it failed to convert incorporated entities into the kind of natural person you can date and marry (though we suppose you could work out some kind of arrangement with a one-person corporation). In any case, even if personhood was the same as peoplehood, most states are hung up on male-female marriage, and the Supreme Court failed to assign a gender to corporations. (If Apple was a person, would it be a man or a woman?) Of course, in states that permit same-sex marriage, this is not likely to be an issue.

Who Owns What I Write for Nonprofit?

Dear Rich: I'm trying to build my resume as a freelance writer, which sometimes means doing things for free. A couple of nonprofits that I volunteer with have had me write for them: an article for an animal shelter's newsletter, and another for a nonprofit kids' magazine. But now I'm wondering whether I can reuse this material and submit it elsewhere, for pay. Do the nonprofits now own the content, or do I? I guess I should have asked them about this earlier, but now I'm embarrassed to.  Don't be embarrassed. You're not the first person to create something for a nonprofit and later wonder about copyright ownership (see our earlier entry on the subject).
Who owns what? Assuming you're not an employee of the nonprofit, and assuming you didn't sign any paperwork assigning your rights in the articles, you own the copyright and can reuse the material however you like. Most likely, what happened is that you gave the nonprofit an implied nonexclusive license to use the article and that's about all.  If you did execute an agreement with the nonprofits, (1) review the rules on works made for hire to determine whether your agreement qualifies as work made for hire; and (2) review the rules regarding assignments to determine if you have assigned your rights. Our guess is that you haven't done either.
Note to nonprofits. If you run a nonprofit and want to acquire rights from freelancers, we suggest that you use a work made for hire agreement, license, or assignment. You can put together a simple agreement with the aid of an attorney or by using our permissions book. And speaking of books and nonprofits, may we also recommend one of our favorites on nonprofit fundraising.

No Sales: Can Book Contract Be Terminated?

Dear Rich, My co-author and I wrote a book published in 1998 by a Berkeley publisher, who then sold the publishing company to an out of state publisher with no interest in the book. We did not receive an advance, and I would generously guess that we received $500 in total royalties to date. The second publisher only sent royalty statements every couple of years, some showing a few dollars owing (but no checks) and others showing substantial reserve against returns, although we don’t believe they are selling the book except on Amazon. We heard that they destroyed most or all of the print stock. We want our rights back, but our contract seems to say that all they have to do is keep one copy “available” for sale (and the Amazon site conveniently says that they have one in stock), and they get our rights in perpetuity. This contract even says they can keep it in print by making it an on-demand title, which I would think could tie it up forever. Can they really keep our copyrights for the rest of our lives and do nothing to sell our book? Obviously it’s not worth our suing them for royalties (their records show $180 due right now, with reserves against returns, of course). And there doesn’t seem to be anything in here giving us the right to terminate for their failure to account and pay us.  As you probably know, back in the old days, book contracts had a provision that they could be terminated if the publisher failed to keep print copies in stock (known as a "reversion clause"). Alas, things are not so simple nowadays.
Print on Demand. We looked at the contract clause you forwarded and unfortunately it appears that termination for insufficient demand is made at the publisher's discretion. The termination/reversion clause also specifically states that print on demand is enough to justify the publisher's rights under the agreement. This is an onerous (but likely enforceable) reversion clause. A more equitable termination provision would have stated that you are justified to terminate if sales are under a certain number of units -- say less than 25 books per quarter -- for three or four consecutive quarters. (The issue of reversion clauses was recently discussed at this blog.)
Throw in the towel? That doesn't mean you still can't terminate the contract. But you must come up with evidence that the publisher committed some material breach of the publishing agreement. Typically, that means a failure to pay royalties. Just because there's nothing in the contact that details an obligation to make timely payment and accounting, these obligations are implied and may be your route to reclaiming rights. You should have a publishing attorney review the contract to determine if that is a basis or if there is another basis for reversion. The attorney would also review your contract's "assignment" provision to make sure that the successor publishers have the rights they claim to have. There may also be creative theories available. Though it's a longshot, a California court may be open to the argument that an exclusive licensee (the publisher) has an implied obligation to exploit the licensed work.
Can they keep the copyright forever? No, but they may be able to keep it until 2033. A copyright owner who transfers rights is entitled to reclaim them after 35 years. See our recent blog entry.