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TASINI DECISION OVERTURNED
September 28, 1999
Freelance writers have won a major victory with a ruling by the U.S. Court of
Appeals in the Second Circuit of New York. The court overturned the lower court
decision in Tasini et al. v. New York Times et al.
The decision says that the "collective works" privilege in 201(c) of the 1976
Copyright Act does not protect the Times and other publishers from copyright
infringement claims. The publishers had claimed that the 201(c) privilege
allowed them to make "any revision in a collective work" that they had
originally published without being required to additionally compensate the
creator of the original work.
In his written decision Chief Judge Ralph K. Winter said,
"there is no feature peculiar to the databases at issue in this appeal
that would cause us to view them as 'revisions'." Judges Rosemary S. Pooler and
Senior Judge Roger J. Miner joined in the opinion.
"Because it is undisputed that the electronic databases are neither the original
collective work -- the particular edition of the periodical -- in which the
Authors' articles were published nor a later collective work in the same series,
appellees rely entirely on the argument that each database constitutes a
"revision" of the particular collective work in which each Author's individual
contribution first appeared. We reject that argument."
"We emphasize that the that the only issue we address is whether, in the absence
of a transfer of copyright or any rights thereunder, collective-work authors may
re-license individual works in which they own no rights. Because there has by
definition been no express transfer of rights in such cases, our decision turns
entierly on the default allocation of rights provided by the Act. Publishers
and authors are free to contract around the statutory framework," Judge Winter
concluded.
The decision greatly narrows what might qualify as a "revision."
While certain uses could still be considered revisions, for all practical
purposes the vast majority of digital uses that have been made in the last few
years would no longer qualify, and would require separate specific licensing for
the digital use.
Many publishers have been arguing that the "Tasini" ruling has given them the
right to re-publish, in a variety of digital formats, anything that apperared in
their print publications. This decision make it clear that those uses were
infringements.
What's Next
Publishers will likely to be much more agressive in adding clauses to their
contracts that expressly transfer electronic rights as well as print rights to
any material they purchase. Many will require the creator to agree to the
transfer of both rights before they use the material in either format.
It is extremely important that photographers and agents read all new agreements
and purchase orders carefully. You should precisely and narrowly define the
rights you are transferring. Also, be sure to charge an appropriate amount for
these additional rights when they are transferred.
If it also time to begin agressively pursuing unauthorized on-line use of images
supplied for print use only. As a first step we recommend sending a "Settlement
Offer" (not an invoice) for three times the normal fee for any unauthorized use
you discover.
Many publications have been very sloppy in checking rights before they put
images on-line. A few settlements may convince them to be more careful and to
negotiate rights before using images.
This decision puts teeth back in the copyright law for photographers, but in
order to collect registration is still important. To register your copyright,
go to the Copyright Office website at http://www.loc.gov/copyright or call
202-707-3000 for application forms.