corner
Copyright
copyright
corner
Tasini Case Final
Decision: Authors Win
by Carol Ebbinghouse
June 28, 2001 — The U.S. Supreme Court
has ruled on the issue of freelance writers’
rights to separate compensation for
electronic copies of their work. The opinion
in New York Times Co., Inc., et al. v. Tasini
et al., 2001 WL (00-201, June 25, 2001)
decided in favor of the authors. (Read the
entire opinion at http://www.supreme
courtus.gov/opinions/opinions.html.) The
seven-justice majority opinion penned by
Justice Ruth Bader Ginsburg found that
“[b]oth the print publishers and the
electronic publishers ... have infringed the
copyrights of the freelance authors.” In the
end, the court concluded “that the electronic
publishers infringed the authors’ copyrights
by reproducing and distributing the articles
in a manner not authorized by the authors
and not privileged by sec. 201(c). We
further conclude that the print publishers
infringed the authors’ copyrights by
authorizing the electronic publishers to place
the articles in the databases and by aiding
the electronic publishers in that endeavor.”
The freelance authors in the case are six
individuals who contributed articles to two
print newspapers (The New York Times
and Newsday) and one magazine (Sports
Illustrated, owned by Time). The authors
argued that their contracts with the
publishers did not concede their rights to
retain copyright in the articles nor did
they include permission for the electronic
reproduction of their works in any kind of
database with or without compensation.
The print publishers in the Tasini case
included the New York Times Co.;
Newsday, Inc.; and Time, Inc. The
electronic publishers were LexisNexis,
with its Nexis database of individual
34
AALL Spectrum December 2001
articles from the print publishers, and
University Microfilms International (UMI;
now ProQuest Information and Learning),
which produces two CD-ROM database
products (New York Times OnDisc and
General Periodicals OnDisc). All of the
database products reproduce each author’s
entire article and are searchable on the
individual article level. All of the database
products provide only the article(s)
retrieved in a search, not the entire issue
(of the newspaper or magazine). So, unlike
archival microform or the original issue,
one cannot “flip” to surrounding pages.
At no time did the print publishers or the
electronic database publishers seek the
consent of the authors, nor did either
compensate the authors for the reproductions.
The issue before the court was “whether
the copying of the authors’ articles in the
Databases is privileged by 17 U.S.C.
section 201(c),” a section covering
collective works. The court “conclude[d]
that the databases do not reproduce and
distribute the articles as part of a collective
work privileged by section 201(c).” This
section permits publishers, without consent
of or compensation to the holders of the
copyright in individual articles (e.g.,
chapters, or pieces of a whole work or
issue) to revise the whole issue, book, etc.
Under Section 201, the publisher can
also reproduce and distribute the author’s
contribution to the whole (an article, etc.) for
a later collective work in the same series.
The court noted that if “there is demand for
a freelance article standing alone or in a
new collection, the Copyright Act allows
the freelancer to benefit from that demand;
after authorizing the initial publication,
the freelancer may also sell the article to
others. ... It would scarcely ‘preserve the
author’s copyright in a contribution’ as
contemplated by Congress, if a newspaper
or magazine publisher were permitted to
reproduce or distribute copies of the
author’s contribution in isolation or within
new collective works.” The court referred
to the belief that “freelance authors have
experienced significant economic loss”
due to a “digital revolution that has given
publishers [new] opportunities to exploit
authors’ works.” The court went on to note
that the “Databases’ reproduction and
distribution of individual articles — simply
as individual articles — would invade the
core of the authors’ exclusive rights.”
The court could have chosen but declined
to issue an injunction against the inclusion
of the articles in the databases. Instead,
the court left it to the lower court, on
remand, to address the remedies. (The
original trial court had given a summary
judgment award in favor of the publishers,
saying the plaintiffs had no cause of
action. An appeal court reversed the
judgment, sending the matter to the
Supreme Court. Now that the Supreme
Court has upheld the overturning and
thereby the rights of the authors, the issue
goes back to the trial court for trial on
other issues and decisions on damages.)
The only alternatives to leaving it to a court
to settle the matter would seem to be if the
parties (authors and publishers) enter into an
agreement (i.e., a settlement) or Congress
intervenes with some kind of model for
distributing copyrighted works and
remunerating authors for their distribution.
Either approach would seem to involve
some kind of master licensing scheme. The
majority opinion declined to engage in
speculation about future harms, and refused
to shrink authors’ rights out of fear of what
might happen after listening to publishers’
warnings of damage to full-text collections.
The dissenting opinion of the remaining two
justices did refer to such issues.
The opinion, however, doesn’t affect
archival microforms that reproduce the
entire edition of a periodical or other types
of republication of individual articles by
freelance authors in a reproduction of the
whole collective work (periodical issue,
etc.). Even the dissenting opinion noted:
“No one doubts that The New York Times
has the right to reprint its issues in Braille, in
a foreign language, or in microform, even
though such revisions might look and feel
quite different from the original. Such
differences, however, would largely result
from the different medium being employed.”
So the print publishers that have been
charging the electronic publishers of
databases for the individual articles written
by freelance authors must compensate those
authors for their works. The electronic
publishers thought they were paying for full
copyright permission from the copyright
holders all along. At least that’s the position
reflected by the indemnification clauses in
licensing contracts between database
aggregators or host search services.
Pat Sabosik, Factiva’s vice president and
director of global marketing, said that
“[L]ike other aggregators, we rely on our
publishers, or licensors, to secure the rights
they have licensed to us. We’re looking to
them to handle this in the future as they
have in the past and to give us guidance
on what action they will take. This is a
publisher problem. ... We expect to take
action on a one-by-one, publisher-bypublisher basis.”
Even the majority opinion, which followed the law, noted that the
publishers “warn that a ruling for the authors will have ‘devastating’
consequences. ... A ruling for the authors, the publishers suggest,
will punch gaping holes in the electronic record of history.” Justice
John Paul Stevens, who wrote the dissenting opinion (with which
only Justice Stephen Breyer concurred), noted that if “the problem is
as important as amici contend, congressional action may ultimately
be necessary to preserve present databases in their entirety. At the
least, Congress can determine the nature and scope of the problem
and fashion on (sic) appropriate licensing remedy far more easily
than can courts.” On that issue, both opinions agree.
Arthur Sulzberger Jr., chairman of the New York Times Co. and
publisher of The New York Times, said: “The Times has lost this case
and will now undertake the difficult and sad process of removing
significant portions from its electronic historical archive. That is a
loss for freelance writers because their articles will be removed from
the historical record. Historians, scholars and the public lose
because of the holes in history created.”
Speculating about the future, Allen Paschal, Gale Group’s CEO,
said: “A couple of things could happen: 1) the publishers and
freelance writers could come to some sort of back-payment
agreement and then track material going forward — that would
mean working with us to get it done — 2) some have already
threatened to expunge the unauthorized articles. ... I can’t comment
on the legal rights or wrongs of the situation. ... I’m just worried
about the cost and effort of cleaning the files up if Tasini leads
publishers to pull articles out. I’d rather see publishers and authors
reach an agreement, a financial settlement. Whichever side of the
fence you fall on, that solution would be more practical.”
Choicepoint
pick up nov. pg.25
The National Writers’ Union (NWU) contends that publishers have
already rebuffed an extended “olive branch.” According to the
NWU, “We are dismayed that the response from some publishers to
the Supreme Court’s ruling has been to quickly reject the olive
branch we have extended. We have urged leaders of the media
industry to sit down and negotiate a fair resolution, which would
build on the comprehensive system the National Writers Union has
already set up for compensating freelance writers for electronic
re-uses of their work.”
Jonathan Tasini, president of the NWU, said: “[I don’t] want to
litigate forever. I am concerned as a writer and as a person
in our society that information stays available. We just want fair
compensation for writers.” He added, “This decision is not the
‘silver bullet.’ Other battles remain to be fought” (such as the Posner
case, which seeks class certification for writers). Tasini thought the
current decision should make that class-action suit approach much
easier. (See the NWU Web page at http://www.nwu.org.)
Michael Jacobs, vice president and general counsel of LexisNexis,
pointed out that “the Supreme Court has the last word until
Congress changes the law. We are going to seek congressional
remedy. But in the meantime, this decision has clearly defined the
rule we have to act on. At least now it’s clear. Businesses going
forward can rely on the ruling and get rights in advance.”
The question remains: If publishers try to go for the gold in
Congress or wait for the trial court to decide matters on remand,
rather than trying to voluntarily deal with author organizations if
they can, what happens to the user? What data losses will we
suffer while the jockeying for position continues?
Carol Ebbinghouse (carole@wsulaw.edu) is library director
at Western State University’s College of Law.
Reprinted from Information Today 6/28/01, with permission.
AALL Spectrum December 2001
35