American Bar Association
Forum on Communications Law
Tasini and Archival Electronic Publication Rights of Newspapers andMagazines
Charles S. Sims and Matthew J. Morris
Consider the following:
.Does the New York Times have the necessary rights to republish its daily paper edition in an electronic format in NEXIS?
.Does Sports Illustrated's acquisition of the right to include an article from a freelance writer in a hard copy of the magazine imply, absent further agreement, a right to republish that issue of Sports Illustrated in NEXIS, or on a CD-ROM that contains the entire year's issues?
These are the questions at stake when the U.S. Supreme Court considers New York Times Company, Inc. v. Tasini, an action critical to newspaper and magazine publishers, electronic republishers (like NEXIS and Westlaw), freelance authors, libraries, and readers everywhere who want access to newspaper and magazine articles on the Internet. The issue framed in the petition for a writ of certiorari is "whether a publisher's reproduction and distribution of its entire periodical not only in print, but also electronically, is privileged under the Copyright Act or instead infringes upon the copyrights held by contributing freelance authors."1 The Court will be required to decide whether publishers of periodicals (which are, in copyright parlance, collective works, comprising both staff and freelance contributions) presumptively have the right to release present and back issues in electronic formats, even if those issues will be available with issues of other publications and searchable by individual article rather than solely by date.
The Second Circuit ruled in favor of the plaintiff freelance authors.2 For newspapers and magazines that bought first publication rights to freelance articles, published the articles in their print editions, and then licensed the contents of these editions to electronic databases such as NEXIS, the decision portends potentially sizable liabilities in infringement suits brought by freelance authors. This risk may have a profound and harmful impact on the maintenance of existing archives and the future of electronic archives generally. In order to clarify the issues before the Court, we first review the Tasini litigation, next examine related post- Tasini civil actions now pending, and finally suggest certain areas in which the Court may probe beyond the Second Circuit's analysis.
Freelance Authors, Publishers, and Electronic Database Services
The Tasini plaintiffs are six freelance writers. While retaining the underlying copyrights, the plaintiffs licensed articles for publication in the New York Times, Newsday, and Sports Illustrated, which are owned by The New York Times Company, Newsday, Inc., and Time, Inc., respectively. The defendants are referred to collectively in this article as the publishers.3 The publishers produced the issues in which those articles appeared in the usual paper format and also electronically through an arrangement with co-defendant Mead Data Central,4 which operates the NEXIS service, and with University Microfilms International (UMI),5 which makes available back issues of the Times on CD-ROM.6 Mead and UMI are referred to as the electronic services. The Tasini plaintiffs alleged that their copyrights were infringed by the license and provision of the articles to Mead and UMI, and the inclusion of the articles in the electronic databases. The defendants contended that the right to publish those articles meant that they could do so electronically or on paper.
The plaintiffs, who had registered copyrights in their articles prior to the suit, were not employees of the publishers and did not write the articles under work-for-hire contracts.7 The three freelance authors who sold articles to the Times did so pursuant to verbal agreements that typically addressed only the price, deadline, topic, and length of the articles.8 Sales to Newsday likewise did not involve written contracts, although Newsday's checks bore a legend stating that the payee's endorsement constituted acceptance of payment for both "first-time publication rights" in the work and "for the right to include such material in electronic library archives."9 When plaintiff David Whitford sold an article for publication in Sports Illustrated, the parties entered a written contract, under which Whitford conveyed the first publication right to his article as well as the nonexclusive right to license its republication and to republish the article in Sports Illustrated and other Time publications, provided Time made additional payments to Whitford when it exercised this nonexclusive right.10
The electronic services (Mead and UMI) obtain content by licensing the right to publish the complete text of newspaper and magazine editions from publishers, including the defendants. In practice, some minor portion of the contents of the collective works is usually omitted, including advertisements, obituaries, and some detailed formatting information. The license agreements typically include representations by publishers that they have and are authorized to convey the rights being conveyed, including the right to publish (or republish) electronically, and further that republication by the electronic services will not infringe the rights of any third parties.
Using NEXIS as an example, each of the publishers licensed Mead to publish their periodicals, including articles by one or more plaintiffs, in the NEXIS electronic database, and that publication usually occurs on the same day as paper publication. Mead inputs the text of each issue into NEXIS, tagging each article with much, but not all, of the identifying information available in the paper edition (such as the author's name, the name and date of the publication, and the original pagination). On the other hand, NEXIS does not indicate whether an article is above or below the fold or whether the article was illustrated.11
The publishers deliver each edition to NEXIS as a whole, and NEXIS uploads each new edition. NEXIS users can read each day's paper by searching for that date in the appropriate file for that newspaper. NEXIS users can also search in files ranging from individual papers to collections of all newspapers, by author, date, or subject. Users can assemble substantially all of the contents of an issue of a given publication, except for advertising, graphics, and the like,12 or obtain individual articles or the contents of multiple issues or publications.
Under a three-way agreement, Mead delivers the contents of each issue of the Times to UMI, which transfers them to a CD-ROM product called The New York Times OnDisc, which is searchable like NEXIS and yields its data in a comparable format. UMI also produces General Periodicals OnDisc. This product, unlike the others, is produced photographically, so that whole issues of periodicals, including the Times's Sunday Magazine and Book Review, can be viewed, complete with their original photographs, ads, and visual formatting. Users locate the contents they want by reading abstracts rather than conducting word searches.13
Tasini District Court Found No Infringement
In 1997, the Tasini plaintiffs sued the publishers and electronic services in the U.S. District Court for the Southern District of New York, alleging direct (not contributory) copyright infringement. Both sides moved for summary judgment. To make out a prima facie case of copyright infringement, the plaintiffs had to show ownership of a valid copyright and infringement of any of the exclusive rights conferred by 17 U.S.C. § 106, e.g., copying by the defendant of original copyrighted expression.14 It was undisputed that the authors had valid copyrights on articles that were first published in print by the publishers and thereafter copied into the electronic services. The issues on summary judgment were whether certain authors contractually authorized the republication of their works in the electronic services; and to the extent that any authors had not so authorized republication, whether the publishers had the right, as the holders of collective work copyrights in their issues, to republish, or license third parties such as NEXIS or UMI to republish, the collective works, as revised, on the electronic services. The trial court (Judge Sonia Sotomayor, who has subsequently been elevated to the Second Circuit) decided the first question in the negative, and the second question in the affirmative, and entered judgment for the defendants dismissing the complaint.
The court first rejected the contractual issue raised by Newsday and Time, both of which argued that the authors had "expressly transferred" to them the right to publish their articles in electronic databases.15 Having concluded that the authors had not contractually transferred their copyrights, the court turned to the default rule of 17 U.S.C.§ 201(c), and considered whether the publishers had (and could transfer to the electronic services) the right, as the holders of collective work copyrights in their issues, to include issues comprising the authors' works in databases. This was an issue of first impression, dependent on statutory construction as informed, where appropriate, by legislative history.
The Copyright Act provides that copyright "vests initially in the author or authors of the work."16 The Act also allows, however, for the ownership of copyright in compilations-works "formed by the collection and assembling of preexisting materials."17 One kind of compilation is a collective work, defined as a "work, such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole."18
The "copyright in a compilation . . . extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work." It "does not affect or enlarge the scope" or ownership of copyrights in the preexisting material.19 In keeping with this limitation on compilation copyrights in general, 17 U.S.C. § 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.20
Thus, the owners of the copyrights in collective works (the publishers) have a right different from that enjoyed by the contributors to those works (the freelance authors).
The extent of these differing rights for authors and publishers depends on the construction of § 201(c). The authors argued that § 201(c) on its face grants no rights but only a "privilege," a nonexclusive and nontransferable license to print each article in the original issue of the periodical and in such later versions, limited to the original medium of publication, as the afternoon edition of a morning newspaper. Reviewing the context of the statutory reference to a "privilege," the district court rejected this distinction and the proposed narrow reading of § 201(c). The court noted that "the 1976 [Copyright] Act, in significant part, amounts to a repudiation of the concept of copyright indivisibility" that permeated the 1909 Act.21 Under the 1909 Act, an author who parted with any of the exclusive rights preserved by copyright ran the risk of relinquishing all such rights. Under the 1976 Act, in contrast, each of the exclusive rights comprised in copyright may be owned and transferred separately.22 The court concluded that § 201(c) referred to the copyright held by the publisher of a collective work as a "privilege" simply in order to emphasize that this right is "limited," inferior to the comprehensive rights a publisher could formerly obtain by default under the doctrine of indivisibility, not to circumscribe the media in which the publishers could exercise the rights they do obtain.23
The court also rejected the authors' arguments that the publishers' right to reproduce their collective works is confined to reproduction in the same medium. For example, the authors argued that because § 201(c) permits collective work copyright holders to reproduce their works, but says nothing of their right to display such works, display of the contents of online databases on computer screens is not authorized by § 201(c) (although printouts might be). The court, however, noted that the right to reproduce a copyrighted work, by definition, encompasses the right to create a copy fixed in any medium, including display in mechanical media such as computers.24 The court also noted that the legislative history of § 201(c) did not suggest a narrow construction of the right to reproduce and distribute collective works, and held that "the 1976 Act was plainly crafted with the goal of media neutrality in mind," so that § 201(c) should not be read to exclude collective work copyright holders from reproducing their works digitally as well as in print.25
What Constitutes a Permissible Revision?
Having held that the privilege granted to publishers by § 201(c) includes the right to reproduce and distribute their works and revisions of those works in any medium, the court turned to the question of what constitutes a permissible revision. The authors contended that the publishers lost any § 201(c) privilege by deconstructing their publications before delivering them to the databases, stripping away the visual format (columns, fonts) and photographs, the ephemeral contents (advertisements, crossword puzzles), and everything else but the articles, the marketable core of the authors' creativity. According to the plaintiffs, because the articles are loaded into computer files that contain multiple issues and possibly multiple periodicals, the digital reproduction of the contents of the publishers' collective works into NEXIS leaves intact nothing that the publishers contributed, none of the selection and arrangement of the materials that entitles them to their compilation copyrights.
The publishers, by contrast, persuaded the court to focus on the front end of the process, on what they deliver to NEXIS, and emphasized that the contents of each issue remain intact and accessible to users who search the databases, not on what users do with available content. Even though users can reassemble individual issues if they wish, the important fact remains that a work included in a database continues to be identified as part of the contents of the publication in which it first appeared, and this identification means that the publisher's selection, and much of the arrangement, of the contents of its collective work remains discernable.26 When the Times identifies "all the news that's fit to print," it performs a "highly creative" task requiring judgment and leaving an indelible mark on every article bearing this imprimatur.27 When each day's issue is loaded issue by issue onto NEXIS, the Times retains its copyright in the collective work comprising all of the daily editions published on the "electronic research library" as surely as it retains its copyright in that same expression in paper issues archived in a brick-and-mortar library,28 even though articles in either the electronic archive or the paper archive can be retrieved individually using paper indices.
Reinforcing its conclusion that the electronic versions of the Times and Newsday are "substantially similar" to the print versions, the district court observed that if any issue of the Times or Newsday was reproduced in NEXIS without the publishers' permission, the publishers would have copyright claims against NEXIS.29 The court accordingly concluded that the publication of the (slightly abridged) periodicals and newspapers in electronic databases, when delivered in a copy-on-copy basis, is a permissible revision of those collective works under § 201(c), and accordingly granted the publishers' motion for summary judgment. The authors moved for reconsideration, which the court denied,30 and they then appealed.
The Second Circuit Reverses
On appeal to the Second Circuit in 1999, Chief Judge Winter (joined by Judges Miner and Pooler) upheld the trial court's subsidiary holdings rejecting the publishers' contractual defenses.31 The court next framed the main issue as "whether one or more of the pertinent electronic databases may be considered a 'revision' of the individual periodical issues from which the articles were taken."32 The court then held that "Section 201(c) does not permit the Publishers to license individually copyrighted works for inclusion in the electronic databases."33
The court reached this conclusion by parsing the final phrases of § 201(c), which divide the collective work copyright holders' right to reproduce the works' component contributions into three parts: publishers may reproduce such contributions only "as part of that particular collective work, any revision of that collective work, and any later collective work in the same series."34 Assuming that any given act of reproduction could fit within only one of these three categories, the court cited canons of construction to support the view that the "revision" allowed by the second clause must be intermediate between the "floor" and "ceiling" set by the first and third clauses, as well as entirely separate and nonoverlapping.35 Within this framework, the court accepted the authors' view that the right to reproduce contributions to a collective work as parts of "any later collective work in the same series" contemplated the occasional publication of new editions of encyclopedias and anthologies, while the right to reproduce such works in "revisions" referred, for instance, to "the final edition of a newspaper."36 The court then decided that "if the contents of an electronic database are merely a 'revision' . . . then the third clause of Section 201(c)-permitting the reproduction and distribution of an individually copyrighted work as part of 'a later collective work in the same series'-would be superfluous,"37 and refused to interpret the section so as to render one of its phrases superfluous.
The court's exposition of this point is doubtful because there is no particular reason to find the three clauses hermetically sealed and nonoverlapping. The court certainly cited none. There is no reason to accept the court's assumption that the second statutory clause out of three must somehow be intermediate between its neighbors and not overlapping them. The canons teaching that each statutory provision should if possible be given some effect, and that no provision should if possible be construed to be superfluous, do not require that the items in a list like that in § 201(c) not overlap.
The court presented additional reasons for its narrow reading of the revision right. It observed that § 201(c) would not permit the publishers to sell individual reprints of the authors' contributions to the public, even if the publishers offered reprints of every article from every issue and thereby enabled readers to buy all of their collective works piecemeal,38 and reasoned by analogy that the publishers could therefore not sell the equivalent of such individual reprints "indirectly through NEXIS."39 The court also found that the 1976 Act's repudiation of the doctrine of indivisibility, its provision in § 201(d) that each of the exclusive rights specified by § 106 may be transferred and owned separately, was incompatible with the publishers' proposed construction of § 201(c). The court expressed further concern that under that construction "it is not clear that the rights retained by the authors could be considered 'exclusive' in any meaningful sense."40
Is NEXIS a Library?
Finally, and perhaps most fundamentally, the court refused to accept the publishers' characterization of NEXIS as a library containing the contents of their collective works. Rather than accept the publishers' emphasis on what the Times delivers to NEXIS, the court focused on what readers take from NEXIS and accepted the authors' attempt to characterize the entire NEXIS database, with its "millions of individually retrievable articles taken from hundreds or thousands of periodicals," as the relevant "revision."41 Having reconceptualized what the publishers give to NEXIS as disaggregated articles, rather than as nearly complete back issues, the court concluded that "NEXIS does almost nothing to preserve the copyrightable aspects of the Publishers' collective works" as distinguished from the preexisting material whose ownership the statute reserves to authors.42 When an issue of the Times is entered into NEXIS, "some of the paper's content and perhaps most of its arrangement are lost," as users generally do not and indeed could not retrieve all of the contents of the issue.43 The court applied the same analysis to the New York Times OnDisc. As for General Publications OnDisc, the court acknowledged that this database offers photographic images of all of the Times's Sunday Book Review and Magazine, but concluded nonetheless that the presence of articles from other publications made this database "substantially similar to NEXIS" and thus "at best a new anthology" rather than a permissible revision.44 Accordingly, the court reversed the decision and directed entry of judgment for the plaintiffs-despite the fact that the defendants had interposed various additional defenses on which the district court had never passed.
Supreme Court Granted Review
In their petition for a writ of certiorari, the publishers argued that the Second Circuit's decision warranted review, even though no other appellate courts had addressed the same issues, because the decision effectively established a national rule that would be ruinous to publishers and the archive-using public and conflicted with settled copyright law.
In support of the first point, publishers argued that electronic databases are accessible nationwide, and, for purposes of personal jurisdiction and venue, their proprietors are subject to suit wherever they "may be found,"45 i.e., everywhere. If, under federal law as construed by the Second Circuit, the publishers and electronic services are subject to damages and injunctions because their contents, including freelance articles, are accessible online, it is no consolation to them or protection to the public that another circuit may adopt a different rule:46 any author can sue a literary publication in New York. In view of the threatened and incalculable damage liability, the publishers argued that they would have no choice but to remove freelance works from their databases everywhere, and, to the extent that the databases are on CD-ROM, to remove any CD-ROM that contained a single freelance work.47
The alternative suggested by the authors to avoid the degradation of existing archives-compensating such freelance writers-would be economically unfeasible even if such writers could be located and were willing to bargain.48 Nor do publishers have an economic incentive to make such payments, since their revenues from archival (electronic) publications would not rise if they retained such articles. Thus, according to the publishers, the Second Circuit's ruling would effectively compel them to gouge holes in the emergent national electronic archive on which the public has increasingly come to depend.49
The publishers added that the Second Circuit's judgment clashed with settled copyright law in two respects. First, as the Second Circuit had observed, "the Authors' claim is that the copyright each owns in his or her individual articles was infringed when the publishers provided them to the electronic databases,"50 but the publishers provide the works to the electronic services as part of each day's issue. Only subsequently, if users conduct certain searches, is an article removed from the context of the original collective work. Imposing liability on the basis of the articles' removal from the context of specific issues would be tantamount to holding publishers and NEXIS liable because of users' conduct, contrary to long-standing principles of direct liability.51 As the U.S. Supreme Court held in Sony Corporation of America v. Universal City Studios, third-party conduct is "irrelevant in an action for direct infringement."52
Secondly, according to the publishers, the Second Circuit was wrong to describe entire databases as the revised collective works for which the publishers claimed the privilege secured by § 201(c).53 The relevant NEXIS or UMI databases cannot be a copyrightable work because each lacks the minimal originality required by § 102 of the Copyright Act as construed by Feist Publications v. Rural Telephone Service Company.54 The revision at issue, they argued, is the abridged edition of each daily paper sent to NEXIS.
The authors responded that the Second Circuit's ruling would not be ruinous to publishers and databases, given that freelance writers wrote only a fraction of the works in databases and can still be reasonably compensated for their contributions.55 Because publishers could locate and compensate freelancers, the authors viewed the wholesale destruction of archives containing freelance works as unlikely and, if it happens, the publishers' own fault. The authors also maintained that review should await percolation of the issues in other circuits.56
The authors argued that the asserted conflict between the Second Circuit's opinion and Sony was spurious as Sony protects the sale of staple articles of commerce capable of substantial noninfringing uses, while the Second Circuit prohibited infringing conduct.57 They also saw no conflict with Feist, reading the Second Circuit's decision as depending not on the belief that databases qualify as new copyrightable works despite the lack of originality involved in assembling them, but on the view that the contents of the databases cease to be recognizable as the old collective works in which resides the only copyright publishers could claim.58
Amicus curiae briefs were filed supporting the petition by a group of newspapers and magazines, and by a group of historians, including Doris Kearns Goodwin, David McCullough, and Ken Burns. On November 6, 2000, the U.S. Supreme Court granted certiorari, and oral arguments are expected to be heard in February or March 2001.
Post- Tasini Cases
Tasini may have been the first significant test of whether § 201(c) gives publishers the right to publish their collective works in electronic services, but others have quickly followed.
Greenberg v. Nat'l Geographic Soc'y
A few weeks after the trial court denied reconsideration in New York, a similar action, Greenberg v. National Geographic Society, was brought in the Southern District of Florida.59 Photographer Jerry Greenberg provided the National Geographic Society with photographs the Society published in its magazine. Without Greenberg's permission, the Society, assisted by certain other entities (together, the "co-defendants") produced and began to sell a thirty-disc CD-ROM set, entitled The Complete National Geographic, which contained exact photographic images of every page of every issue of the Society's magazine, including those pages featuring Greenberg's photographs.60 In three counts of his complaint, Greenberg alleged that the reproduction of his photographs on the CD-ROMs violated his copyright. The co-defendants moved for and obtained summary judgment as to these counts. In reaching this result, Judge Lenard recapitulated and adopted Judge Sotomayor's analysis.61 While Greenberg argued that various aspects of the visual display in the CD-ROMs made The Complete National Geographic "more than trivially different" from the print issues, the court found the print magazine "recognizable" in the CD-ROM product and held that the Society had the right to publish CD-ROMs of back issues.62 After a final judgment was entered on all counts, the parties cross-appealed, and the appeals were briefed and argued before the Eleventh Circuit, which has not ruled on them.
Because the Greenberg court followed the district court's reasoning in Tasini, reversal of Tasini would almost certainly dictate success for National Geographic. By contrast, if the U.S. Supreme Court affirms the Second Circuit, it could compel a reversal of the grant of summary judgment for the co-defendants in Greenberg, but not necessarily-because The Complete National Geographic preserves the visual appearance of the print magazines, unlike any of the databases at issue in Tasini except for General Periodicals OnDisc. The Second Circuit held that although General Periodicals OnDisc visually preserves the appearance of print issues of the New York Times Magazine and Book Review, it still did not qualify as a revision of them within the sense of § 201, because it contained reproductions of other periodicals as well.63 By contrast, The Complete National Geographic does not contain the contents of multiple periodicals, although it must evidently contain multiple issues on each CD-ROM. It would thus present a harder test of the Second Circuit's rule. If the Second Circuit were presented with The Complete National Geographic and a claim identical to Greenberg's, it might nonetheless find that the copyrightable elements of the original collective works become submerged in the CD-ROM product, which is, after all, in a completely different medium from print, and which may well permit users to click through to the articles they most wish to peruse without studying each issue as a whole.
More recently, seeking to exploit the Second Circuit's decision in Tasini, three putative class actions have been filed on behalf of the same purported class of freelance writers, alleging copyright infringement by electronic database publication.64 Each action names as defendants the successors to Mead and UMI as well as the owners of other major electronic databases, including the Thomson Corporation, Bell & Howell Company, Dow Jones & Company, Northern Light Technology, Inc., and various subsidiaries.65 The named plaintiffs include such widely recognized authors as Jessica Mitford, James Gleick, and E.L. Doctorow, as well as the National Writers Union and the Authors Guild. The plaintiffs in each action allege that electronic database publication of their works without their permission constitutes willful copyright infringement remediable by awards of statutory and/or actual damages, attorneys' fees, and injunctive relief. On December 6, 2000, the Judicial Panel on Multidistrict Litigation ordered the three cases consolidated in the Southern District of New York before Judge Sidney Stein.
These purported class actions bring into focus the stakes riding on the U.S. Supreme Court's disposition of the appeal in Tasini. If the Court reverses, the databases will prevail as a matter of law in the three purported class actions, and the intentions of the existing electronic archives will be preserved. If the Court affirms, on the other hand, all of the major electronic databases, as well as the newspapers and magazines that supply their contents, will face damages claims from thousands of freelance writers.
The actions may not be certified as class actions, because the claims of the various freelancers who might be included in a class are factually disparate, depending on the license agreements of each author and, perhaps, their knowledge of their publishers' electronic publishing practices. In addition, as of December 1, 2000, the publishers and databases have promising defenses based on, inter alia, the statute of limitations, the failure of some authors to register their copyrights until the eve of litigation, and various waiver and estoppel doctrines.
Despite these defenses, the risk to the defendants is considerable, as is the threat to existing comprehensive archives. It is no coincidence that publishers have begun requiring freelance writers to transfer electronic rights in signed writings as a condition to first publication, and databases are seeking to obtain similar express transfers. The publishers are also halting or reconsidering projects involving the digital republication of back issues presently kept only on microfilm or on paper.
As in many cases, which result is right in Tasini depends on which side's story is chosen as the accurate way to describe the facts and issues presented.
The authors examine the facts from the point of view of database users, to some of whom it may well appear that the publishers have simply published disaggregated articles-a new compilation, not one sanctioned by 17 U.S.C. § 201(c).
The publishers and electronic services, on the other hand, direct attention to what the publishers have actually done-added an electronic format for their daily papers, so that, on any given day, a newspaper or magazine is published on paper and electronically, with the electronic text being published essentially intact. Because publishers have the undoubted right to publish revisions of their periodicals, and the Copyright Act has never been read to limit that right to revisions in the same medium, the publishers contend that they should be able to exercise their right by transferring their periodicals to electronic media. To deprive the publishers and the public of this medium of publication for their collective works-to require them to pay an additional permission fee to holdout freelance contributors or delete archives if they fail to do so-would be to deprive publishers of their § 201(c) rights and to read into copyright law media limitations on the publishers of collective works that Congress expressly eschewed when it revised the copyright law in 1976.
The U.S. Supreme Court will choose one of those patterns when it decides Tasini. Our prediction: the publishers' perspective is truer to the realities of contemporary technology and practice, and fully compatible with the statutory language. It is possible to create a CD-ROM product that presents each issue of a magazine exactly as that issue appears in print, and contains only issues of that magazine. Indeed, it is possible (though wasteful) to make a CD-ROM that contains only a single issue of a given publication (and, for that matter, to release that CD-ROM at the same instant that the print issue hits the newsstands). Under the Second Circuit's analysis, both those products-indeed, even the microfilm and microfiche copies on which many newspapers have been available for decades-arguably violate the copyrights of freelance contributors. But if, as common sense requires, the existing microfilm archive consists of permissible revisions of the collective work copyrights held by periodical publishers, then it is difficult to see a principled reason why copyright law should not also permit such publishers to offer CD-ROMs dedicated to photographic images of single issues; or CD-ROMs (like The Complete National Geographic) containing multiple complete issues of a single publication; or the archival publication of newspapers in an electronic service like NEXIS.
If the Copyright Act, which Congress is empowered to enact in order to "promote the Progress of Science and Useful Arts,"66 permits publication of an article-by-article index to the New York Times and publication under the protection of § 201(c) (without further payments to freelancers) of The Complete National Geographic, there is no good reason why it should not permit publication of The New York Times Magazine on CD-ROM, even if other periodicals happen to appear on the same discs; or online, even if the online database file containing it can be searched concurrently with searches of files containing other periodicals.
The principle of medium-neutrality that Congress adopted in 1976 seems to require that § 201(c) be construed either to allow publishers to make whatever is available on paper and in microfilm available in electronic media as well, or to compel them to halt and purge even the microfilm republication of their works. The Second Circuit's cursory and studiously evasive treatment of the differences among the Mead and UMI products at issue in Tasini suggests that it did not come to grips with this problem; perhaps the U.S. Supreme Court will.
Even assuming that the Second Circuit did not intend to question microfilm publishers' rights to republish under § 201(c) on microfilm, it is hard to see how allowing publishers possibly to offer complete photographic copies of their issues on microfilm, but not (without additional transaction costs) to offer text-only copies of the articles that constitute the bulk of those issues, is a rational construction of the Copyright Act. Although it may increasingly be feasible technologically to present documents electronically in formats that preserve as many of the ephemera associated with the original selection and arrangement as the authors could demand-right down to the crossword puzzles!-users may not want only faithful replicas of the originals. Suppose, for instance, that the CD-ROM we hypothesized, containing only one photographically complete issue of the Times, and published validly as a revision of the print collective work, contained an option allowing users, by double-clicking once or twice, to select some of the same contents (but not the ads, crossword puzzles, etc.) in text-only format. Users would be able, in effect, to shift from a presentation very like microfilm, which is currently possibly a permissible medium of republication for a collective work, to one almost identical to that of the New York Times OnDisc, which is currently deemed to infringe. Can it really be that the Act allows publishers to make the one presentation, but disallows the other?
Finally, it is hard to see how affirming the Second Circuit's decision would benefit freelance writers, and at the same time hard to doubt that affirming the decision would harm both publishers and the public.
If the Court affirms the decision, it would not help authors prospectively because whichever default rule the Court chooses, everyone agrees that publishers and authors can contract around it. Given the structure of the marketplace-few buyers, a large number of unorganized sellers-the inescapable fact is that the publishers have the economic power to insist on their chosen terms. It should be no surprise, therefore, that publishers have already begun demanding express written transfers of online rights from their freelance contributors without marginal increases in payments offered, and obtaining authors' agreement to those terms. Such demands will only become more prevalent. If a newspaper's first choice for the next gardening article or book review will not sign that paper's standard-form contract, which now expressly grants the paper at a minimum a nonexclusive license to publish electronically and in an electronic archival database, the paper will commission the needed articles from another writer clamoring for publication.
Affirming the Second Circuit's decision would, however, surely, and we submit gratuitously, harm the public, by leading directly and swiftly to wholesale deletions, by newspapers and magazines, of freelance articles from existing databases on which students, librarians, researchers, and the wider public have come to depend. The threat of damages liability will inexorably lead publishers to remove identifiable freelance works from existing online and CD-ROM archives, because retaining those articles risks damage suits and (in the aggregate) substantial liabilities, while deleting them is virtually cost-free. The economic calculus runs sharply in favor of deletion: the revenue from maintaining freelance articles is low, and the likelihood that any given article might ever be accessed is far less than the likelihood that the authors of that article would be included in a class action lawsuit challenging the mere maintenance of those articles in the database as an infringement of the display and distribution rights. With virtually no economic upside to retaining freelance articles in the electronically available archived editions, and substantial economic downside, it is hard to doubt that publishers, most of them public companies with eyes necessarily on the bottom line, will delete in preference to the alternative, which would be to (a) spend the resources necessary to locate freelance writers of articles written over the past few decades, and (b) spend the resources necessary to come to acceptable terms with them.
Because affirming the Second Circuit's decision promises no real benefits to authors, and serious harm to the public interest, the Court likely will, and should, choose a tenable construction of § 201(c) that averts unnecessary harm to the public for whom copyright law has been enacted.
1. See Brief in Support of Petition for a Writ of Certiorari at i, New York Times Co. v. Tasini, No. 00-201, __ U.S. __ (2000), petition for writ of certiorari granted November 6, 2000. Oral arguments are expected to be heard in February or March 2001.
2. See Tasini v. New York Times Co., 206 F.3d 161 (2d Cir. 1999).
3. Tasini v. New York Times Co. , 972 F. Supp. 804, 806 (S.D.N.Y. 1997) (Sotomayor, J.). Another publisher, The Atlantic Monthly Company, settled with plaintiffs before the case came on for summary judgment. Id.
4. Mead was the predecessor of LEXIS-NEXIS, a division of Reed Elsevier, Inc., which operates LEXIS-NEXIS. We refer to the owner of NEXIS as Mead.
5. UMI was the predecessor of ProQuest, a division of Bell & Howell. We refer to UMI.
6. Tasini, 972 F. Supp. at 806.
8. Id. at 807.
11. Id. at 808.
14. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).
15. Tasini, 972 F. Supp. at 810. To satisfy the requirement of 17 U.S.C. § 204(a) that a transfer of copyright ownership is valid only if memorialized in a signed writing, Newsday argued that the legend on the checks with which it paid authors, stating that the checks were payment for the right to include the articles in "electronic library archives," constituted a sufficient transfer of copyright interests to satisfy § 204(a). The court rejected this argument, noting that Newsday sent its articles to NEXIS before the authors could cash or indeed receive the checks. Tasini, 972 F. Supp. at 810. Although a memorandum of transfer can serve to validate a prior oral agreement, Newsday produced no evidence that it reached such oral agreements with the authors. Id. at 811. Moreover, the court found the check legends too ambiguous to qualify as express transfers of electronic rights to plaintiffs' articles. Id. As for the written contract between Time and Whitford, Time was unable to rely on the provisions allowing it to republish his article, for it had not made the required additional payments to him. The court also rejected Time's argument that its right "first to publish" Whitford's article meant that it was entitled to the first publication in electronic media as well as in print. It held that the print publication of Whitford's article was the first publication, and that the electronic publication, forty-five days later, was not within the rights contractually granted to Time. Id. at 811-12.
16. 17 U.S.C. § 201.
17. 17 U.S.C. § 101.
19. 17 U.S.C. § 103(b).
20. 17 U.S.C. § 201(c).
21. Tasini, 972 F. Supp. at 815, citing 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 10.01[A] (1996 ed.).
22. 17 U.S.C. § 201(d)(2).
23. Tasini, 972 F. Supp. at 816.
25. Id. at 817.
26. Id. at 823.
28. Id. at 825 n.16.
29. Id. at 826.
30. See Tasini v. New York Times Co., 981 F. Supp. 841 (S.D.N.Y. 1997).
31. The court held that Whitford's grant of first publication rights to Time did not authorize Time to license the electronic publication of his article. Tasini v. New York Times Co. , 206 F.3d 161, 171 (2d Cir. 1999). The court also noted in dictum that despite the legend on Newsday's checks, endorsement of the checks by the authors did not constitute an express transfer of copyright as required by § 204(a). Id. at 164 n.1. Newsday had abandoned its argument on this point.
32. Id. at 165. As the court noted, the publishers did not argue that "the electronic databases" were "the original collective work" or "a later collective work in the same series," the other possible bases, within § 201(c), upon which a collective work copyright owner may reproduce a work. Id. at 166.
33. Id. at 165. Because the resolution of this issue in favor of the authors was a sufficient basis for reversal, the appellate court did not address the issue of whether, as the trial court had found, the "privilege" of revising collective works was a "right" that the publishers could transfer to the electronic services under § 201(d).
34. 17 U.S.C. § 201(c).
35. Tasini, 206 F.3d at 167.
38. Id. at 168.
43. Id. at 169. The court here also rejected as "inapposite" the argument that the electronic versions of the publications are "substantially similar" to the print originals.
44. Id. at 170.
45. See 28 U.S.C. § 1400(a).
46. See Brief of Amici Curiae Advance Publications, Inc., et al., in Support of the Petition at 10-18, New York Times Co. v. Tasini, No. 00-201, __ U.S. __ (2000).
47. Id. at 15.
48. Id. at 16.
49. In reliance on NEXIS and other electronic archives, many libraries have for decades been reducing their archival collections of paper copies of periodicals. Id.
50. 206 F.3d at 164-65.
51. See Brief in Support of Petition for a Writ of Certiorari at 22-26. The authors have not asserted a contributory or vicarious liability claim.
52. 464 U.S. 417, 446 (1984).
53. See Brief in Support of Petition for a Writ of Certiorari at 26-28.
54. 499 U.S. 340 (1991).
55. See Brief in Opposition to Writ of Certiorari at 10-11, New York Times Co. v. Tasini, No. 00-201, __ U.S. __ (2000).
56. Id. at 12-16.
57. Id. at 20-23.
58. Id. at 23-25.
59. See Greenberg v. National Geographic Soc'y, 97-3924-CIV-LENARD, 1998 U.S. Dist. LEXIS 18060 (S.D. Fla. May 14, 1998). Because the trial court resolved the § 201(c) issues in this decision, we do not review its subsequent opinion on other copyright issues, available at 1999 U.S. Dist. LEXIS 13874 (S.D. Fla. June 8, 1999).
60. Greenberg, 1998 U.S. Dist. LEXIS 18060, at *2, *9.
61. Id. at *5-*10.
62. Id. at *9-*10.
63. Tasini, 206 F.3d at 170.
64. These actions are Laney v. Dow Jones & Company, Inc., 00 769 (RRM) (D. Del.), filed Sept. 7, 2000; Authors Guild, Inc. v. Dialog Corp., 00 Civ. 6049 (SS) (S.D.N.Y.), filed Sept. 22, 2000; and Posner v. Gale Group, Inc., 00 Civ. 7376 (RO) (S.D.N.Y.), filed Sept. 28, 2000.
65. Additional defendants in one or more of the actions include MediaStream, Inc., and Content Commerce, L.P., which operate databases; EBSCO Industries, Inc., which prepares materials for use in databases; and the Union Tribune Publishing Company, which publishes the San Diego Union-Tribune online.
66. U.S. Const. art. I, § 8, cl.8.
Charles S. Sims (firstname.lastname@example.org) is a partner at Proskauer Rose LLP and has represented various newspapers and magazine publishing companies as amici curiae in New York Times Co. v. Tasini. Matthew J. Morris (mmorris@proskauer. com) is an associate at Proskauer Rose. The authors are also counsel to defendant Reed Elsevier, Inc., in three post-Tasini putative class actions.