Freelancers win battle over electronic republication rights of their works

Publishers who buy freelancers’ works cannot make them routinely available for reproduction in electronic databases, the U.S. Court of Appeals in New York City (2d Cir.) ruled in late September, reversing a federal District Court decision.

The lower court had called the publication in databases a “revision” that would be protected by the publishers’ copyright in “collective works,” but the appellate panel rejected that characterization.

Jonathan Tasini, a freelance writer and president of the National Writers Union since 1990, and a group of freelance writers who had sold copyrighted stories to prominent media in 1993 challenged the right of those media to republish their copyrighted stories in electronic databases.

The six writers sued the periodicals that bought their works — The New York Times, Newsday, Time, and the Atlantic Monthly. They also named in the suit Mead Data Central, which markets the news database NEXIS, and University Microfilms Inc., which sells New York Times articles on CD-ROM.

The writers told the federal District Court in Manhattan that they owned the copyrights to the articles they sold, that they sold only the right to publish one time, and that they never agreed to republication in an electronic database.

As an example, the writers recounted the publication by The New York Times of the Tasini article “Can it Be Morning in Teamsterland,” the provision by the newspaper of an electronically reproduced copy of the article to Mead Data Central, and Mead Data’s reproduction of the article on NEXIS. There it was available to NEXIS subscribers who could, and did, download it.

Tasini called that series of transactions “trafficking” in his work. Other freelancers told the court similar stories. The electronic sales infringed the authors’ copyrights, causing them economic loss and injury, they said.

The writers acknowledged that the Copyright Act of 1976 provides for copyrights in “collective works” in which a number of works are “assembled into a collective whole.”

But they said that the collective works copyright privileges are limited. For instance, a publisher can copyright a day’s newspaper, even if he does not have copyrights in the individual stories appearing there. And the act allows “revisions,” they noted. But they said republications of electronic versions are not “revisions.” The collective works copyright never was intended to apply to republication in an electronic format, they said.

The publishers and the database providers argued that the “collective works” copyright protection covers reissue in electronic format. That is only a revision of the collective work, they said, noting that the act provides that the owner of copyright in a collective work acquires the privilege “of reproducing and distributing the contribution” as a part of the particular collective work, any revision and any later collective work in the same series. The 1976 Copyright Act was drafted to accommodate developing technologies, they said.

In August 1997, the federal District Court ruled that the electronic versions are revisions of the original articles, and that they are covered by the publishers’ copyright interests in collective works. Freelance writers who sell their stories may not stop the publishers who buy them from putting the contents into electronic databases or CD-ROMs, the lower court said.

In revising the Copyright Act in 1976, Congress was not dealing with any perceived problem associated with the ability of publishers to produce other versions of their collective works. Instead, Congress was concerned that the publishers might usurp the entire copyright of original authors, the court said.

The language of the act limits the range of the right in collective works, the lower court said, but it never was intended to undermine the competing goal of ensuring that collective works could be marketed and distributed to the public.

To the extent that electronic reproductions constitute revisions, the publishers are entitled to authorize the electronic defendants to create those revisions, the lower court said.

The lower court said the Copyright Act prevents a publisher from revising the contribution itself or including it in a new anthology or an entirely different magazine or other collective work. But it allows reprinting a contribution in a later issue of its magazine, and it does not “limit the medium” in which a revision can be created, it said.

Tasini and the other writers appealed to the U.S. Court of Appeals in New York City (2nd Cir.). Publishers should not be able to exploit freelance writers’ copyrights, they said. The 1976 Copyright Act, which was enacted to protect the original copyrights of authors, does not give publishers the right to license database providers to commingle individually copyrighted articles into electronic database anthologies, they said.

Stories in these databases are not included in “revisions,” but instead are a part of “new anthologies,” Tasini argued. This use of these stories is not part of the collective works privilege publishers enjoy under the Copyright Act, he said. They are certainly not transferable rights that publishers can give to database services, he said.

The periodical publishers reiterated that electronic databases are revised, digital copies of collective works.

In late September, the appeals panel reversed the lower court, saying electronic databases are not merely “revisions” of a collective work, but republication in a different medium. The publishers provided for transfer of individual stories, the appeals panel said, which is not allowed under their limited copyright in collective works. Nothing in the transfer of the stories to a database gives them that privilege, the court said.

NEXIS is a database comprising thousands or millions of individually retrievable articles taken from hundreds or thousands of periodicals. It can hardly be deemed a “revision” of each edition of every periodical that it contains, the court said.

Publishers are free to contract around the statutory rights of authors, the court said, but they must have an agreement from an author before they can provide copyrighted material to electronic databases. (Tasini v. The New York Times)