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TASINI WINS
June 26, 2001
In a key decision for free-lance writers (and photographers), the Supreme Court has ruled
in favor of Jonathan Tasini and against The New York Times on the question of whether
creators have the right to control the use of their copyrighted works.
The court ruled 7-2 that a compilation in an electronic database is different from other
types of archival or library storage of material that once appeared in print. The
copyright laws require big media companies such as The New York Times to get permission
from free-lancers before posting their work in digital databases.
Large publishers argued that a ruling for the authors would have "devastating"
consequences for complete access to the historical record. "Historians, scholars and the
public lose because of the holes in history created by the removal of these articles from
electronic issues of newspapers such as the Times," Arthur Sulzberger Jr., chairman of New
York Times Co., said in a written statement.
The New York Times claims that only 8% of the articles published between 1980 and 1995
were produced by free-lancers, but this totals about 115,000 articles by 27,000 writers.
In 1995 the Times amended their contracts to require all contributors to permit electronic
usage of any material the newspaper purchased and used.
Justice Ruth Bader Ginsburg wrote the majority opinion for the Court and suggested, "The
parties may enter into an agreement allowing continued electronic reproduction of the
Author's works; they, and if necessary the courts and Congress, may draw on numerous
models for distributing copyrighted works and remunerating authors for their distribution.
...speculation about future harms is no basis for this Court to shrink authorial rights
Congress established in 201(c)" (of the Copyright Act).
However, the Times seems opposed to trying to work out some reasonable method of
compensating authors for additional uses of that might be made of these articles in the
future. Instead it intends to delete from the New York Times newspaper's electronic
archive all free-lance material covered by the case. Much of the material to be deleted
are features from the travel, book review and magazine sections.
Time Inc., a second defendant in the case, has said it will also start deleting articles
on a case-by-case basis from the Time and Fortune databases. Another defendant, The
Tribune Company, which owns The Chicago Tribune, The Los Angeles Times and Newsday, is
assessing the decision's impact.
None of the defendants seems inclined to try to develop a system that would return a
portion of the revenue collected to the copyright owners.
Determining Damages
The Supreme Court sent the case back to the Federal District Court in Manhattan to work
out details of a remedy for the violation. This may include damages. However, according to
lawyers involved in the case, there are still a number of unresolved questions that were
not part of the Supreme Court case and they may take months or years to resolve. It is
worth noting that this case was filed in 1993 and has been working its way through the
legal system since that time.
The National Writers Union has set up a "publication rights clearinghouse" where writers
can register their work and publishers can track copyright ownership and payment
obligations. This system delivers payment based on actual usage and a few publishers are
using this system to compensate free-lancers.
Catherine Mathis, a spokeswoman for The New York Times said the paper would not negotiate
with the union because "it does not speak for all free-lancers." (The NWU has 7,000
members.) Instead, the Times intends to lobby Congress to amend the copyright statutes.
A key question in determining who will be able to collect damages as a result of a final
settlement, and thus the overall limits of damages, is how to interpret the three year
statue of limitations for copyright law. Publishers are likely to argue that the
three-year period begins when the article is put into the database, meaning most
infringements have expired. Free-lancers will likely claim a fresh infringement occurs
every time a piece is downloaded. However, even if this argument were to be accepted
their is a likelihood that many items in the database have never been downloaded. Any
claimant who has not already filed a suit may be prohibited from doing so.
Implications For The Future
In recent years The New York Times and other publication have been modifying their working
agreements with free-lancers to allow the publications to use material originally produced
for print purposes in all electronic formats. Most have been paying little or nothing
extra for these rights. Creators can expect all publications to move more aggressively in
this direction.
If creators agree to such terms before producing the initial work, or the initial sale,
then the Court's decision does nothing to provide them additional protection or
compensation. Photographers who want to protect their rights must insist on having a
formal written agreement with the publisher before any work begins.
This decision, is unlikely to bring additional compensation for past work to many
photographers. It will not push publishers to pay higher rates, or to pay more for
additional uses. Individual sellers will still need to negotiate hard, on a case by case
basis, if they expect to get higher fees. They will also need to be prepared to say NO to
bad deals.
Revisions
The case turned on whether electronic reproduction of a newspaper or periodical
constitutes a revision of the original print edition. Under copyright law, publishers do
not need the author's permission to produce a revised version of the original edition.
The publishers had argued that their collective work copyright accorded them the right to
reproduce the separate articles under section 201(c) of the Copyright Act. The Court found
that the publishers were not protected "because the databases reproduce and distribute
articles standing alone and not in context."
"Like the Court of Appeals, we conclude that the 201(c) privilege does not override the
Authors' copyrights, for the Databases do not reproduce and distribute the Articles as
part of a collective work privileged by 201(c)," wrote Justice Ginsburg.
National Geographic
In the majority decision Justice Ginsburg drew a distinction between a microfilm roll and
a database, both of which combine multiple editions. She pointed out that with microfilm
"the user first encounters the article in context," while in a database the
individual articles are "disconnected from their original context."
The court may soon have a chance to expand on the role of context because National
Geographic has announced that it would soon appeal to the Supreme Court the Atlanta
Appeals Court ruling in the Jerry Greenberg case. That case involves the publication of a
30-disc
CD-ROM set entitled "108 Years of National Geographic on CD-ROM." (See Story
389 .)
In this instance Geographic reproduced every page of every issue of the magazine, but the
appeals court still determined it was a new work rather than a revision. It will be at
least fall before we know whether the Supreme Court will agree to hear the case.
Currently the Greenberg case has been remanded to the District Court in Miami. If the
Supreme Court refuses to hear Geographic's appeal, then the Miami court has been
instructed to hold hearings and provide "injunctive relief" for Greenberg. The appeals
panel of judges instructed Judge Lenard in Miami "to consider alternatives, such as a
mandatory license fees, in lieu of foreclosing the public's computer-aided access to this
educational work."
While Geographic may be forced to pay damages in those instances where suits have been
filed, only a handful of photographers have filed suits at this time. The statute of
limitations may have expired for all the rest.
For more background on the Tasini case and how it has progressed see Stories
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