Tasini: The Final Chapter

by Laura Gasaway

After more than eight years of litigation, the final chapter in New York Times v. Tasini was written when the United States Supreme Court handed down its decision in the case on June 25, 2001.¹ Six freelance writers had sued the New York Times, Time Warner and other publishers over the electronic rights to their articles originally published in printed newspapers and magazines but which publishers subsequently made available through various online databases such as LexisNexis and New York Times Online and on General Periodicals OnDisc and other similar CD-ROM products.

When freelance writers signed agreements with publishers to include their articles in print journals and newspapers, republication of the articles in an electronic database was not mentioned in the agreements. Since no one envisioned such a development at the time, it is not unusual that copyright transfers were silent about electronic rights.

The district court had held for publishers² (see September, 1999 Copyright Corner), which publishers appealed to the Second Circuit Court of Appeals³ (see February, 2000 column). The Second Circuit reversed, upholding the writers' claims. The case was then appealed to the U.S. Supreme Court. In a seven-two decision the Supreme Court agreed with the Second Circuit and held for the writers.

Under the 1976 Copyright Act, copyright belongs to the author.

The author may transfer the entire copyright to a publisher or only certain parts of the exclusive rights. In order for a publisher to publish an article, the author must transfer at least the reproduction and distribution rights for including the work in the journal or newspaper issue. Since 1995, newspaper and magazine publishers have required that transfers of reproduction and distribution rights also include electronic rights. Thus, the case dealt with articles by freelance authors published in print publications before 1995 and later incorporated into online databases by the publishers.

Newspaper and journals are collective works in which separately copyrighted articles are published as a collection. Two copyrights are involved, the first is in the individual article. In Tasini, the authors had registered the copyrights in their individual articles. The second copyright is in the collective works, such as the journal issue, and that copyright is held by the publisher. According to the Court, one of the reasons for the revision of the copyright statute in 1976 was to ensure that authors were not so disadvantaged as they had been in comparison to publishers. Thus, any right not specifically transferred to a publisher belongs to the author. Since the writers did not transfer the electronic rights to the publishers, such rights remain with the author.

The issue on appeal was whether incorporation of articles by freelance authors into online databases (i.e., copying them into the database), constituted a permissible revision under § 201(c) of the Copyright Act. The statute states that in the absence of an express transfer of copyright or one of the rights under it, the owner of the copyright in the collective work is "presumed to have acquired only the privilege or reproducing and distributing the contribution as a part of that particular collective work, any revision of that collective work, and any later collective work in the same series." Publishers maintained that the inclusion in a database of articles by freelance authors that had appeared in print issues was such a permissible revision. In an opinion written by Justice Ginsburg, the Court disagreed stating that such an encompassing construction of this section of the Act would diminish the authors' exclusive rights in their articles.

Publishers argued that microform reproductions of journals were privileged revisions and electronic databases were no different. They believed that "revisions" should be media neutral, and thus a database was the same as a microform version of a printed journal. The Court accepted the classification of microform reproductions as privileged because they look just like the printed editions, including all advertising, headlines, etc., and articles appear in the same order The majority did not agree, however, that databases were the equivalent of microforms since the articles do not appear as an "issue," but instead a database is an entirely new compendium. The fact that users of the databases can via a search generate a "revision" was not persuasive; instead, the Court framed the issue as whether the database itself presents the author's contribution as part of a revision of the collective work.

The Court also recognized that other countries have decided under their domestic laws that either Internet or CD-ROM reproduction and distribution of works by freelance authors violates the copyrights of freelancers. So, this decision tracks what is occurring internationally.

Justice Stevens authored a strong dissent joined by Justice Beyer. The dissent basically disagreed that inclusion of articles by freelance authors in a database absent a specific transfer of the electronic rights does not constitute a permissible revision under § 201(c). The dissent believed that under the theory of media neutrality, when a publisher reproduces a collection of articles as ASCII files, it should be treated as a revision of the original text as long as each article refers to the original collection such as the volume, page number, and date of the publication.

True, page placement, column width, and other such superficial features are lost, but the important editorial selection is wholly preserved. Further, the dissent found that nothing the database does to the files transmitted from the publisher strips it of its status as a revision. More importantly, Justice Stevens indicated that the policies underlying copyright and the reasons for its existence make it wrong for the majority to reject this reading of the statute.

Publishers alleged that if the case were decided in favor of the freelance writers, they would be forced to excise these articles from their databases. The majority stated that although this was possible, "speculation about future harms is no basis . to shrink authorial rights ." The dissent noted, however, that this decision, which seems to favor authors, could actually result in publishers requiring complete transfer of the entire copyright before it would accept freelance articles for publication, and that would put authors back in the same undesirable place they had been before passage of the 1976 Act.

Although the American Library Association and the Association of Research Libraries filed an amicus curiae brief on the side of authors, librarians clearly have an interest in the completeness of databases of magazine and newspaper articles.⁴ If the result of Tasini is that articles are by freelance writers are removed from electronic databases, then the public and libraries will be seriously disadvantaged. On the other hand, some publishers may offer to settle with freelancers, which would benefit everyone. If this proves too complicated or difficult to achieve, then the quality of the databases on which librarians and library users depend will be compromised since articles by freelance writers prior to 1995 will be removed. Libraries that eliminated back runs of printed journals and newspapers in reliance on electronic access to complete runs, will be especially disadvantaged.

¹ This case will be cited 533 U.S. _____ 2001. The page number for the blank will be assigned later.

² 972 F. Supp. 804 (S.D.N.Y. 1997).

³ 192 F.3d 356 (2d Cir. 1999).

⁴ SLA and several other library associations elected not to join in this brief but to remain neutral. SLA specifically hoped for a settlement among the parties.