AUTHORS, NOT PUBLISHERS, OWN THE RIGHTS TO ELECTRONICALLY REPRODUCE ARTICLES
(2000) 

The Internet has changed how people communicate with each other.  Likewise, it has forced businesses, especially those in the communication industry such as magazine and newspaper publishers, to change the way they communicate with consumers.  As a result, publications initially made available in print are subsequently being exploited through on-line databases and CD-ROMs.  The potential income from traditional publications being adapted to the lucrative computer medium has led to disputes between authors and publishers over who owns these valuable "electronic rights."

Free lance writers believe they should control any subsequent dissemination of their original works of authorship.  These writers view redistribution rights as crucial to their economic survival because significant income comes from their ability to sell secondary rights such as syndication, translations and anthologies.  The general belief among free lance authors is that the electronic database publishers are handsomely compensated by their on-line customers and licensing agreements with electronic publishers.  The authors, however, receive nothing.

Publishers contend they are merely placing the contents of their collective works into an electronic medium and revisions of their own publications do not require further payment to the authors.  Publishers also view such payments as troublesome because, given the still experimental nature of electronic publishing, it is not possible to accurately estimate profits.

These valuable electronic rights were formally addressed in Tasini v. The New York Times Co., Inc., when the United States Court of Appeals for the Second Circuit became the first court to apply the Copyright Act of 1976 to the electronic distribution of copyrighted materials.  The Second Circuit found that the authors owned the right to publish articles in the electronic medium, and that publishers had infringed the authors' copyrights by selling the works to electronic databases without permission.
The Copyright Act of 1976

Prior to the Tasini decision, both authors and publishers claimed unassailable copyright protection.  Protection for an author's original writing is at the very heart of the Copyright Act, which is rooted in Article I, Section 8 of the United States Constitution.  Through the Copyright Act of 1976 Congress provided express protection for publishers of collective works such as newspapers and magazines.  Although a free lance magazine article, e.g., would constitute a separate and independent copyrighted work, the magazine's publisher would have a separate copyright in the material it contributes to the magazine and for the selection and arrangement ofmaterial contained in the magazine.  The magazine itself would thus be considered a "collective work."

The Copyright Act also affords publishers with certain privileges of reproduction with respect to the individual works.  The owner of the copyright in the collective work is presumed to have the privilege to reproduce and distribute the individual work as part of "that particular collective work, any revision of that collective work, and any later collective work in the same series."  It was these privileges of reproduction and distribution that the Tasini court interpreted and applied to electronic rights.

Tasini v. The New York Times

The authors claiming copyright infringement in Tasini were six free lance writers.  All the disputed articles were original works, and each of the articles had been copyrighted by the author.  The Tasini publishers included The New York Times Company, Inc., The Time Incorporated Magazine Company, and The Atlantic Monthly Company.  Generally, negotiations between the publishers and the free lance writers was limited to informal discussions regarding due dates, word counts, subject matter, and compensation.  Their negotiations did not address electronic rights.  The electronic publishers in Tasini were Mead Data Central Corp., publisher of the NEXIS database, and University Microfilms International, operator of CD-ROM publications.  These electronic publishers had licensing agreements with the publishers providing that their periodicals, including the copyrighted articles of the authors, would be transferred to them in electronic database form.

The Tasini authors pointed to the distinct copyright protection for their works, as provided in the Copyright Act, as evidence that only they could control the redistribution of their works.  The Tasini publishers likewise pointed to the Copyright Act and argued that the transfer of their collective works to electronic databases was a privileged revision of their own publications.

The Tasini court held that the privilege allowing reproduction and distribution as part of "that particular collective work" applied to the original work only, and merely allowed publishers to include the articles in each copy of magazine or newspaper printed for distribution and sale.  Regarding the privilege for any "revision of that collective work," the Second Circuit used newspapers for illustrative purposes.  Due to late-breaking news, the court noted, the evening edition of a newspaper often differs from the morning edition.  Thus the Second Circuit interpreted this privilege as applying to such revisions that differ somewhat from the original, but are not in any ordinary sense a "later work."

With respect to the privilege for a "later collective work in the same series," the Second Circuit cited encyclopedias as examples of publications at which the privilege was aimed.  The court noted that encyclopedias are updated less regularly than newspapers.  This privilege allows publishers to include individual contributions from previous editions in any such subsequent edition.  These, said the Tasini court, are the later collective works in the same series this privilege was designed to allow.  These later revisions are also the ceiling, or outer limit, of a publisher's right to reproduce and distribute individual contributions.

The Second Circuit held that a publisher's transfer of copyrighted articles from the print medium to the electronic medium was not a "revision" privileged by the Copyright Act.  To find otherwise, held the court, would give offense to the general rule that the copyright vests initially with the author.  The Tasini court noted that specific provisions of the Copyright Act were designed to further protect authors from an unintended transfer of copyrights.  Consequently, the Second Circuit declined to interpret the privileges provision in a manner contrary to the express purpose of other statutory provisions.

A final reason for the court's narrow interpretation of "revision" sprung from the manner in which periodicals are formatted for the electronic medium.  In transferring articles to electronic databases the individual issue of the periodical is electronically "stripped" into separate files representing the individual articles.  During the stripping process substantial formatting information, such as page layout, is lost.  Additionally, because the publishers do not compel an end user to retrieve an individual work only in connection with the collective work in which it initially appeared, the publishers selection and arrangement of articles is also lost.  Because a publisher's selection, coordination and arrangement of material is lost during the formatting process, the Second Circuit held that the publisher's contribution to the collective work, the materials that permitted the copyright of the collective work, is lost.  What the end user can ultimately access, noted the Tasini court, is the preexisting materials that belong to the author.

In the Wake of Tasini

Importantly, the Tasini court explicitly found that there was no express transfer of copyrights by any of the authors.  In fact, the Tasini court stated that:   "[p]]ublishers and authors are free to contract around the statutory framework."  Further underscoring the point, the Tasini court noted that The New York Times had already updated its policy to require free lance writers to execute an express transfer of their electronic rights.  Consequently, publishers may include free lance works in their licensing agreements with electronic publishers, provided they first obtain express rights to authors' copyrighted articles.

The Tasini court also seemed to suggest that if the publishers had allowed individual works to be retrieved only in connection with the collective work in which it initially appeared, thus preserving the collective work, a different result may have been reached.  Publishers would likely be reluctant to endorse any radical departure in the manner on-line searches are currently conducted.  Given the number of articles that publishers have already placed in the electronic medium, however, and the staggering number of infringements represented thereby, publishers will likely considering all options in the wake of Tasini. 

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