Justices tell publishers to pay up

Decision enforces freelancers’ copyrights in digitally reproduced articles

From the Summer 2001 issue of The News Media & The Law, page 24.

By Ann Premer

The Supreme Court settled at least one thing in its latest copyright decision — publishing freelance materials on electronic databases without permission violates the authors’ copyrights. But the implications of the decision and the way in which the parties should respond has created the basis for another lawsuit.

The Supreme Court ruled 7-2 that the reproduction and distribution of articles in an electronic database infringed upon the copyrights of the freelance authors. The case, Tasini v. New York Times Co., has been remanded to the U.S. District Court in New York City to determine damages.

The freelance writers successfully argued that reproducing and distributing their work on electronic databases constituted a new work that infringed upon their copyrights, while the publishers maintained that it was within their rights to publish the work electronically because the print publishers owned the freelance articles as a collective work.

Since the June 25 decision, the New York Times Company has begun deleting thousands of freelance articles from its database.

“It doesn’t have to be that way,” said Charlotte Douglass, the principal legal adviser to the general counsel of the U.S. Copyright Office. “At one point, the Supreme Court said there are ways you can authorize licensing.”

The Authors Guild, displeased with the decision from the Times to remove freelance articles, filed a suit on July 3 against the company and electronic database publishers. Emily Bass, an attorney who filed the initial suit against the print and electronic publishers, said the Authors Guild case was consolidated along with three other suits that were combined as a class action suit against the electronic database publishers in U.S. District Court in New York City.

Announcements in the newspaper since the Supreme Court decision said the Times could not maintain freelance articles in electronic libraries without the writer’s permission. Articles written between 1980 and 1995 will be removed unless the authors agree to have their articles restored to the electronic databases.

“Up until the ruling, the New York Times believed that it had the power to electronically archive articles, so we didn’t have a secondary option,” Toby Usnik, a spokesman for the New York Times Co., said about the decision to remove articles.

“We took the articles down because we didn’t want to be found to be willfully infringing those copyrights. Now that we are in the process of that and now that Tasini and others want to have a discussion we are open to those discussions to explore a resolution,” he said.

Douglass said that the Copyright Office submitted a letter supporting the view that the copyright law required permission from the authors to reprint articles on an electronic database. She said the reaction from the Times to delete articles would have a negative effect on the public because they will lose the advantages of accessability to electronic databases.

“It won’t be a hole in history. It will just make things harder,” Douglass said.

According to the online contract from the Times, for freelancers to have their work restored, the authors may not select a specific work but would agree to restoring all work. The offer further provides that “to have your work restored, you agree that you will not be compensated and that you will release the Times from any claims relating to your work appearing in electronic archives such as Nexis.”

Usnik did not know exactly how many writers asked to restore their work, but said the newspaper had received a “steady flow” of requests. He said the removal process would be complete by August.

“We’ve identified the full list of articles and communicated it to Nexis, and they are in the process of removing them,” Usnik said.

Bass said that the Supreme Court decision established “a default rule that applies where a freelancer and a publisher have not entered into an express agreement that provides explicitly what the publisher may do with an individual freelance article or photograph. It doesn’t preclude them from creating an electronic version of their newspaper or magazine so long as the electronic version is intact and an individual freelance article or photograph appears online only as part of the intact version.”

Bass also said the decision does not prevent freelancers and publishers from agreeing to give a publisher the right to place freelance articles on an electronic database. Under the Copyright Act, freelance writers control the rights to their works sold to publishers unless there is an agreement otherwise. Publishers, however, retain the rights to an entire publication, including freelance contributions, as a collected work and may revise or republish the work as a whole.

At issue in this case was whether the reproduction or distribution of the articles on an electronic database constituted a new work or a collected work.

The court said in its decision that “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.”

Bass said the court decided that placing an article, photograph or graphic online represented a copyright infringement.

Not all publishers are discouraged by the Supreme Court’s ruling. Terry Adamson, executive vice president for National Geographic, wrote in a statement that the ruling may help buttress that magazine’s side in a similar case. National Geographic has appealed to the Supreme Court a decision by the U.S. Court of Appeals in Atlanta (11th Cir.) that sided with a freelance photographer who sued National Geographic for reproducing and distributing his work in The Complete National Geographic on CD-ROM.

Adamson distinguished the Eleventh Circuit case from Tasini because the CD-ROM version of National Geographic is an exact image-based reproduction of every page of the complete issues of the magazine, whereas Tasini involved articles that were individually reproduced out of their original context.

The Tasini suit dates back to Dec. 16, 1993 when Jonathan Tasini, president of the National Writers Union based in New York City, and other freelance authors sued the New York Times Company, Newsday, Inc., and Time, Inc., as well as two electronic database companies. They argued that their copyrights had been infringed upon when the print publishers licensed rights to copy and sell articles to computerized databases such as Lexis/Nexis. The freelance writers sought declaratory and injunctive relief and damages.

The lower court sided with the publishers and dismissed the case. This was overturned in September 1999, when the U.S. Court of Appeals in New York (2nd Cir.) determined that the electronic databases did not produce revisions of the original works but produced new works, which did not preserve the publishers’ copyrights of the articles.

The freelance writers argued their articles were not republished, but rather reproduced as a new work because the computer databases contained the articles in a text-only format. In this format, they told the court, the articles did not resemble the way the work was published in the original print version. For instance, a Nexis user would not be able to reproduce the front page of The New York Times, but the user would be able to individually access all of the articles that were on the front page.

The publishers maintained that as the copyright owners of the original publication or the collective works they had the right to reproduce and distribute the freelance articles on an electronic database. The publishers argued that the electronic databases are analogous to the microfilm or microfiche copies that newspapers sell. Microfilm, however, maintains the original published format of the article in the periodical, whereas a database may only reproduce the work as an individual article.

The Supreme Court was not persuaded by the publishers argument that likened databases to microfilm. The court said that articles in microfilm are reproduced in the very same position as the original article, which makes the reproduction a part of a collective work but that “in the [electronic] Databases, by contrast, the Articles appear disconnected from their original context.” (Tasini v. New York Times Co.) u