Mary Parmelee
ILS 599
Final Paper
July 24, 2013
New York Times Co. v. Tasini
533 U.S. 483 (2001), affirming 206 F.3d 161 (2nd Cir. 2000), amending Tasini v. New York
Times Co., 192 F. 3d 356 (1999), reversing 972 F. Supp. 804 (S.D.N.Y. 1997)
This case was interesting on a number of levels. First, while the actual ruling is narrowly
drawn, the philosophical intellectual property rights discussed in the court opinions are not.
Copyright is recognized in the Constitution as a means of encouraging the development of
creative and original work. This purpose creates an inherent tension between the dissemination
of knowledge and the need to provide an economic incentive. Shuff & Holtz at 555-556. This
tension is exacerbated with collective works because, since the adoption of the Copyright Act of
1976, there are two separate copyright holders with competing interests: the original copyright
owners of the individual work and the copyright owner of the collective work, which is a
copyright separate and apart from the individual copyrights. Tasini is the first case that discusses
the provisions of the Copyright Act of 1976 with respect to collective works. This case also is
the first case to address the myriad issues raised by electronic databases and the new
technologies that affected distribution of copyrighted works. Radefeld at 547. Finally, the
district court opinion, 972 F. Supp. 804 (S.D.N.Y. 1997), from the Southern District of New
York (with jurisdiction over New York, Bronx, Duchess, Westchester, Putnam, Rockland,
Orange and Sullivan counties) was authored by Sonia Sotomayor, now a Supreme Court justice.
The suit was brought by freelance writers against various publications. The authors
claimed that the sale of their articles for inclusion in electronic databases and CD-ROMs
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(hereinafter referred to collectively as electronic media) was a violation of the copyright they
retained in their individual articles.
The plaintiffs were successful with their suit and damages actions continue their way
through the courts. Initially I believed that the practical implications of this decision would be
minimal with respect to future publications, as publishers simply could change their procedures
and policies to require an assignment of the electronic copyright in addition to the assignment of
the right to print the articles as hard copy. In most cases, the publication has the bargaining
power. In fact, as noted in footnote 2 of the District Court opinion, the New York Times
changed its procedures to require the author to surrender all electronic rights in purchased
articles. Id. at 807.
In terms of its impact on past practices, however, the Tasini decision is immense. When
searching the databases at Buley Library, for example, I paused to wonder about the articles that
do not have full text, and whether this was a direct result of Tasini. At the time the case went to
the Supreme Court, there were seven additional pending cases concerning the copyright of
collective works. Sugarman, et. al. at 19. Moreover, prior to the Tasini decision, the
Washington Post had not included articles by freelance journalists in its own online archives, so
this decision may have had more far-reaching implications than originally contemplated. At the
same time, the damages awards are working their way through the court system, with damages as
high as $18 million being reached in settlement agreements, Oder, et.al., while database vendors
report receiving requests from authors to not remove their work from databases. Kenney at 50.
District Court
The facts of the case were undisputed with both plaintiffs and defendants filing motions
for summary judgment. Plaintiffs, all free-lance writers, sold their articles to various
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publications. These publications then published the articles in hard copy, and also sold the
articles for inclusion in electronic media. The manner in which the electronic media displayed
the articles became a critical point. In all cases, the electronic media were searchable and
yielded results which displayed the articles individually. This meant the articles were seen
individually without the context of the rest of the publication. In some cases the actual page on
which they had been published as hard copy was seen, but the pages preceding and succeeding
the article were not. It is possible for a user to construct a search that would yield the entire
publication. Two of the defendants (Time and Newsday) unsuccessfully claimed that the
plaintiffs had authorized the sale.
The district court held that the electronic media constituted a revision of the articles
within the meaning of section 201(c) of the Copyright Act of 1976, and thus was permissible.
Section 201(c) provides:
Copyright in each separate contribution to a collective work is distinct from copyright in
the collective work as a whole, and vests initially in the author of the contribution. In the
absence of an express transfer of the copyright or of any rights under it, the owner of
copyright in the collective work is presumed to have acquired only the privilege of
reproducing and distributing the contribution as part of that particular collective work,
any revision of that collective work, and any later collective work in the same series.
17 United States Code § 201(c)
In reaching its decision, the court relied on the purpose underlying the adoption of section
201(c). The court noted the lack of case law interpreting section 201(c) in general and the
relationship between the section and electronic technologies specifically. Additionally, because
the law "was crafted through a unique and lengthy process involving the input of numerous
experts from assorted interest groups and industries . . . the pertinent legislative history is
notoriously impenetrable." Id at 812.
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Judge Sotomayor considered section 201(c) within the context of the entire Act, with
particular attention to section 103(b) which addresses collective and derivative works. Section
103(b) provides that the work included in a collective work is itself protected by independent
copyright, as is the work upon which the derivative work is based, and was intended as a
clarification of prior copyright law. This means that the creator of a collective or derivative
work has a copyright separate and distinct from the copyright of the individual or underlying
work.
The plaintiffs first argued that section 201(c) granted to the publishers only a "narrowly
circumscribed nonexclusive license", id. at 815, which, unlike an assignment, cannot be
transferred to the publisher of the electronic media. The district court disagreed, stating that such
an interpretation of the term privilege in section 201(c) would contradict the purpose of the
Copyright Act of 1976 to repudiate the concept of indivisibility of copyright.
The plaintiffs also argued that the right to reproduce articles as part of a collective work
precludes the use of computer technologies. Of particular interest here are contradictory
statements made by plaintiffs at trial regarding the use of copyright and microfilm, with Judge
Sotomayor concluding that if section 201(c) permits microfilm reproductions, it would be
impossible to hold that the electronic media constituted a copyright violation. Id. at 816,
footnote 7.
Plaintiffs argued that section 201(c) does not grant the right to display the work publicly,
a right defined by section 106. Arguing that a work cannot be reproduced from the electronic
media without being displayed on a computer screen, the plaintiffs contended that this thus
constituted a copyright violation. The court rejected this argument, holding that the right to
create copies of a work included the fact that such copies might first be seen on a computer
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monitor. Additionally, if the defendants have a legal right to transfer the work to an electronic
medium, section 109(c) expressly permits them to display the work publicly. Id., footnote 8.
The plaintiffs argued that the term "revision" as used in section 201(c) should be
construed narrowly, based on examples of revisions from the legislative history. The court
disagreed with this reading of the legislative history, stating that any revision is allowed so long
as it is a revision of the collective work. The court continued by noting that the Copyright Act of
1976 created a national commission to study copyright and computer technologies. This
commission determined that the 1976 Act provided sufficient copyright protection without
additional laws. The commission was then disbanded. The District Court relied on this to
conclude that electronic revisions of work are permissible.
The plaintiffs also argued that a plain reading of the term revision would prohibit
inclusion in the electronic media. The court rejected this argument as well, stating that by
limiting publishers to reproductions of individual works, Congress then allowed "significant
leeway" in revising their collective works. Id at 819.
The court went on to discuss compilations, collective works and revisions thereof. A
collective work is a particular type of compilation, one that is a compilation not of facts, which
are not protected by copyright, but a compilation of independent works, which are protected by
copyrights owned by the individual authors. The creator of the collective work is then granted a
copyright in the compilation as well. In order for section 201(c) to apply, the revision must be of
the collective work.
The original contribution of the creator of the collective work typically is the selection
and arrangement of the individual work into a collective whole. Placement of the articles in the
electronic media clearly negates the arrangement of the individual work. Plaintiffs argued that
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the electronic media in fact dealt in individual articles rather than collective works with the
defendants dismantling the collective works in order to electronically exploit the individual
works. The court disagreed, stating
...If the disputed periodicals manifest an original selection or arrangement of materials,
and if that originality is preserved electronically, then the electronic reproductions can be
deemed permissible revisions of the publisher defendants' collective works. If, on the
other hand, the electronic defendants do not preserve the originality of the disputed
publications, but merely exploit the component parts of those works, then plaintiffs'
rights in those component parts have been infringed.
Id. at 822 (emphasis added)
The court held that a defining characteristic of each publication was the selection of articles for
that collective work. In fact, absent that selection, the articles would not appear in the electronic
media. Because the fact of selection remains in the electronic media by electronic tagging in
addition to notation on each article of the name and date of the original publication, the selection
alone was sufficient for the databases to be considered a revision within the meaning of section
201(c).
The plaintiffs argued that, except for the image-based CD-ROMS, the electronic media
did not contain page layouts, captions or photographs, thus negating the electronic media as a
revision of a collective work. The court again disagreed, stating that a revision inevitably would
differ from the original, and that the electronic media were recognizable versions of the hard
copy.
The court recognized that the decision deprives authors of the economic benefits of the
sale to the electronic media. The court not only recognized this, but concluded that the "real
complaint lies in the fact that modern technology has created a situation in which revision rights
are much more valuable than anticipated" when the Copyright Act of 1976 was adopted. Id. at
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827. It is impossible to ignore the irony that, given the state of periodicals in 2013, the revision
rights today may perhaps be more valuable than the original publication of the collective work.
In a subsequent denial of the plaintiffs' motion for reconsideration, 981 F. Supp. 841
(S.D. N. Y. 1997), the court expounded on its section 201(c) analysis, stating that its first step
had been to determine "the defining characteristics" of a collective work. Id. at 847. It was
critical to do so because the statute itself is media neutral. Because collective works are a subset
of compilations, the court looked to cases of copyright infringement of compilations for
precedent.
Court of Appeals
The U.S. Court of Appeals for the Second Circuit (with jurisdiction over the district
courts for Connecticut, New York and Vermont) disagreed with this approach, and relying on
strict statutory construction, reversed the decision of the district court and granted relief to the
appellant authors. Tasini v. New York Times Co., 206 F.3d 161 (2d Cir., 2000). Chief Judge
Winter, writing for the unanimous court, stated that distribution of a copyrighted work is a
copyright infringement unless the creator of the copyrighted work has given permission for such
distribution or the distribution is protected by the Copyright Act.
The court began with the language of the statute, noting that the clauses must be read in
context with each other. The first clause establishes that the owner of the copyright of the
collective work may distribute the individual work as part of the collective work. The court
interprets the collective work to mean "a specific edition or issue of a periodical." Id. at 167.
The court continued that the second clause, which permits distribution as part of a revision of the
collective work, is an expansion of the first clause. As an exception to the copyright ownership
of the authors of the individual pieces, section 201(c) should be construed narrowly.
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The court noted that section 101 of Title 17 provides a statutory definition of collective
work, listing periodicals, anthologies and encyclopedias as examples of collective work. All of
these examples can be updated by revised editions. The court used this statutory definition to
support its reading of the second clause of section 201(c) to mean that the revisions referred to
were meant to include later editions of the collective work such as different editions of the same
newspaper. The court also cited the legislative history of section 201(c), noting that it was not
meant to allow owners of the collective-work copyright to subsequently include the individual
works in different anthologies, periodicals or "other collective work". Id. at167 citing H. R. Rep.
No. 94-1476 at 122-23 (1976).
Finally, the court noted that the rules of statutory construction required the courts to
interpret statutes in such a way that no parts of the statute are rendered insignificant or
superfluous. The third phrase of section 201(c) permits inclusion of the individual works in
"later collective works of the same series." The court noted that
An electronic database can contain hundreds or thousands of editions of hundreds or
thousands of periodicals, including newspapers, magazines, anthologies, and
encyclopedias. To view the contents of databases as revisions would eliminate any need
for a privilege for 'a later collective work in the same series.'
Id. at 167.
Thus, even though electronic databases may not have been explicitly discussed when adopting
section 201(c), the existence of the third clause in the section, along with the rules of statutory
construction, mean that electronic databases do not constitute revisions within the meaning of
section 201(c). The court concluded that a sale of an individual work in hard copy would violate
the copyright of the author even if all of the other articles in the collective work were being
offered for sale. Electronic media cannot be used to accomplish indirectly what would be a
violation if done directly.
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Supreme Court
Majority Opinion
The Supreme Court upheld the decision of the Second District by a 7 - 2 decision. New
York Times Co. v. Tasini, 533 U.S. 483 (2001). Writing for the majority, Justice Ginsburg
opined that "because the databases reproduce and distribute articles standing alone and not in
context", they did not constitute a revision within the meaning of section 201(c). Id. at 488. The
means by which a user would find an article, and the way it which it is displayed were key
factors in the court's decision, with each article ultimately appearing as an isolated item, with no
link to the rest of the publication in which it originally appeared. The court noted that, prior to
adoption of the Copyright Act of 1976, authors who had articles published in collective works
such as magazines would lose the copyright to their article unless a copyright notice was printed
with the article. Copyrights were considered indivisible. Because an author could not transfer
only the right to appear in the publication, and because most publishers declined to print an
author's copyright notice, articles published in collective works would either be protected by the
publisher's copyright or be in the public domain.
The Copyright Act of 1976 was intended to correct this situation by rejecting the doctrine
of indivisibility of copyright in favor of discrete "exclusive rights" which could be owned
separately. Id. at 495-96. Hence, an author could transfer the right to publish an article in a
collective work, but the publisher would only have those right granted by contract or by section
201(c). The remainder of the copyright in the individual work remained with the author of that
work. In fact, absent a contract to the contrary, the author is free to sell his work to others. Id. at
497. To allow a publisher to include articles in a new collective work, whether or not it is
electronic, would violate the intent of Congress in adopting the act.
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The court did not discuss the opinion of the district court that the selection of the articles
for publication remains as a critical component of the collective work, thus permitting inclusion
of the articles as a revision within the meaning of section 201(c). The court instead looked at the
identifying information, which listed the original publication in hard copy, as indicating that "the
article was previously part of that periodical." Id. at 500. The court rejected the idea that the
database was a revision of the collective work, stating "The Database no more constitutes a
'revision' of each constituent edition than a 400-page novel quoting a sonnet in passing would
represent a 'revision' of that poem." Id.
The court also rejected the argument of the publishers that inclusion of the articles in the
database was merely a transfer from one type of media to another, such as the transfer from
newsprint to microfilm. Because searches of the databases are structured to deliver individual
articles, the court did not agree that the transfer was media neutral.
The majority of the court consisted of Chief Justice Rehnquist and Justices Ginsburg,
O'Connor, Scalia, Kennedy, Souter and Thomas. Justice Stevens filed a dissenting opinion,
joined by Justice Breyer.
Dissenting Opinion
Justice Stevens added to the discussion of the history of copyright law by noting that the
indivisibility of copyright, prior to the Copyright Act of 1976, had put "significant pressure" on
an author to transfer the copyright in trust to publishers of collective works. The authors then
would reclaim their copyright subsequent to publication. Id. at 507-508. The 1976 Act sought to
provide more protection for contributors to collective works. The dissent found that the authors
here were still protected by the copyrights they held in their individual works, but that inclusion
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in the electronic media was a revision within the meaning of section 201(c) and thus did not
violate that copyright.
In analyzing the term revision, the dissenting opinion stated that the fact that the entire
editorial content of the collective work is sent to the database provides sufficient context for
individual articles to be considered a revision. The conversion of the text to searchable data files
should not change this because of the principle of media neutrality. Pursuant to this principle,
publishers of collective works may reprint those works "in Braille, in a foreign language, or in
microform, even though such revisions might look and feel quite different from the original." Id.
at 512-513. Judge Stevens elucidated that the differences are a result of the medium used for
publication. When the medium being used is electronic, it is necessary to format the articles
individually to enable the user to access them. Because every article referred to the original
collective work and every article in the collective work was included in the database, Justice
Stevens concluded that the database should be considered a revision under the principle of media
neutrality.
The dissent noted that the District Court was correct that the selection of the articles for
publication was the most important creative element in publishing collective works. This
element of selection was preserved by the electronic media. When considering inclusion of other
work in the database, the dissent returned to the principle of media neutrality. Microform
versions of collective works may contain more than one publication and still be considered a
permissible revision. Thus, the inclusion of other collective works should similarly be allowed
for electronic media.
The dissent also noted that the users of the electronic media would be using it in the same
way that they used microform: to view or print individual articles. Their . . ."infringing third-
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party behavior should not be attributed to the database." Id. at 518. Justice Stevens went on to
note that the only difference between the use of microform and the use of the electronic media is
the speed with which the user can access an individual article. Id. at 523, footnote 20.
Discussion and Analysis
The irony that all of the research for this paper was conducted through electronic
databases is not lost on me. As stated at the beginning of this paper, the practical impact of this
decision for publications going forward should be minimal. The publications had all the
bargaining power and simply could require authors to assign the right for inclusion in electronic
media. In fact, as noted by Justice Stevens in his dissent, since 1995 the New York Times did
require authors to convey those rights, and there was no increase in compensation to the authors
as a result. Id. at 522. (Given these facts, the amount of the damages awards seems staggering
by comparison.) This means that the practical impact would be on the inclusion of articles
published without such a conveyance of rights after passage of the Copyright Act of 1976.
While every opinion seemed strained in its conclusion, the only opinion which discussed
what I perceived as a key issue is the dissent by Justice Stevens. This issue was raised by the
Amici Curiae Brief for Ken Burns and compares the use of the database to the use of microfiche.
Id. at 522-523. Prior to the existence of electronic media, a researcher would use The Reader's
Guide to Periodicals to locate individual articles on point to their topic. The fact that the articles
were presented in context of the original publication was in most cases irrelevant to the
researcher. Occasionally a researcher would browse through an entire issue, much as a library
patron might have looked at other cards in the card catalog, but this was rare and can still be
accomplished by crafting the appropriate search of the database. As noted by Justice Stevens,
the only difference between the electronic media and the microform is speed. Therefore, if the
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microform was considered a revision within the meaning of section 201(c), the electronic media
also should be so considered. It is possible that the actions taken by the end user to copy
individual articles would be a copyright infringement; if so, then they also could have been
considered copyright infringement when the collective works were on microform.
Justice Stevens also agreed with the District Court determination that selection by the
publishers for inclusion in the collective work was an essential component of the creative work
undertaken by the publishers. While the authors allege that the publishers are obtaining windfall
profits from the sale of individual articles, this overlooks the fact that the value of the article was
created by the very act of selection by the publisher. Radefeld at 567. Radefeld took the
selection analysis one step further to look at the selection process of the databases and concluded
that the purpose of the database was to be comprehensive and thus, the databases did not engage
in any selection process with respect to individual articles.
The American Library Association ("ALA") and the Association of Research Libraries
("ARL") filed an Amici Curiae brief with the Supreme Court in support of the authors to address
the practical implications of the decision. This brief agrees with the ruling of the Second Circuit
Court of Appeals because that decision best protects the creative work of authors and therefore
furthers the public interest. The bulk of the brief sets forth its disagreement with the
consequences of the decision (as anticipated by the publishers) and does not discuss the theory of
the decision itself. It is interesting to read this with the benefit of more than a decade of
hindsight. For example, most libraries today provide access to older periodicals only through
electronic databases, with there being insufficient storage space for microfilm, microfiche or
hard copies. This is in direct contradiction of the statement in the brief that "[electronic
databases] are collections of information designed to meet particular market demands and do not
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fulfill the traditional roles of libraries and archives." While research libraries may still retain the
archives referred to in this brief, the contents of The New York Times, Time Magazine and
Sports Illustrated (the magazines that were the publishers in this case) certainly are accessed at
public libraries as well through electronic databases.
The ALA/ARL brief discussed the practical implications of the decision for preexisting
databases and CD-ROMs, noting that section 502(a) of the Copyright Act of 1976 gives the court
discretion in the remedies ordered, allowing the courts to restrict the remedies to those deemed
reasonable. Presumably, this would mean that the courts could allow those materials to remain
in existence. This point was not addressed by the courts.
Perhaps the most important thing I learned from this assignment was exactly how
complicated copyright law can be.
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References
Copyright Act of 1976, 17 U.S.C.
Gordon, W. J. (2000). Fine-tuning Tasini: Privileges of electronic distribution and reproduction.
Brooklyn Law Review, 66 (Summer/Fall), 473-500.
Hoff, M. (1999). Tasini v. New York Times: what the Second Circuit didn't say.
Albany Law Journal of Science & Technology, 10, 125-165.
Jaszi, P., Lutzker, A. P., & Settlemyer, C. H. (n.d.). Brief Amici Curiae of the American Library
Association and the Association of Research Libraries in Support of the Respondents.
Retrieved from http://www.arl.org/storage/documents/publications/tasiniamici.pdf
Kenney, C. (2002, March). Newspaper publishers in the post-Tasini era.
Searcher: The magazine for database professionals, 10(3), 50-58.
New York Times Co. v. Tasini, 533 U.S. 483 (2001).
Oder, N., Blumenstein, L., & Rogers, M. (2010). Tasini case back in court.
Library Journal, 135(6), 12.
Pike, G. H. (2008, January). Revisiting Tasini. Information Today, 25(1), 17-20.
Radefeld, M. B. (2003). The medium is the message: Copyright law confronts the
information age in New York Times v. Tasini. Akron Law Review, 36, 545-587.
Shuff, J. D., & Holtz, G. T. (2001). Copyright tensions in a digital age.
Akron Law Review, 34, 555-569.
Sugarman, R. G., Gray, N. J., & Davis, P. M. (2001). Electronic publishing
rights: the Tasini case. Intellectual Property & Technology Law Journal,
13(9), 18-20.
Tasini v. New York Times Co., 972 F. Supp. 804 (S.D.N.Y. 1997).
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Tasini v. New York Times Co., 981 F. Supp. 841 (S.D.N.Y. 1997).
Tasini v. New York Times Co., 206 F.3d 161 (2d Cir. 2000).