Tasini Heats Up

388

March 27, 2001

Prior to the U.S. Supreme Court hearing later this week of the Tasini vs. New York Times Company
case, two actions that have raised the hopes of content creators.

Marybeth Peters, the Register of Copyrights, and a long time advocate for creators' rights, has
gone on record with a compelling document supporting authors.

In addition the 11th Circuit Court of Appeals found in favor of photographer Jerry Greenberg in
his suit against National Geographic for copyright infringement.
(See Story 389 .)

The New York Times, their co-defendants, and other publishers should be particularly concerned
about the Greenberg case. National Geographic used digital technology to faithfully and
accurately portrays each page of every issue of every magazine. The resulting CD-ROM's more
closely resembles the original than the "revisions" created by the New York Times co-defendants.

Nevertheless, Judge Stanley F. Birch, Jr., writing for the appeals panel, found that NGS's
output could not be considered a mere revision and said, "Common-sense copyright analysis
compels the conclusion that the Society...has created a new product...in a new medium, for a new
market that far transcends any privilege of revision or other mere reproduction envisioned" in
the law.

The court of appeals panel also dealt with the issue of injunctive relief. The publishers in the
Tasini case have tried to argue that if the court rules for the freelancers databases will be
forced to "minimize the risk of liability by prophylactically eviscerating electronic
collections" of freelanced materials, "irreparably undermining" the public record. In the
Greenberg case the appeals panel urged U.S. District Judge Joan Lenard who will determine
appropriate injunctive relief, "to consider alternatives, such as mandatory license fees, in
lieu of foreclosing the public's computer-aided access to this educational and entertaining
work."

Marybeth Peters views are a response to a request from Congressman McGovern and have been
published in the Congressional Record. They have also been incorporated into legal briefs being
prepared by authors' attorneys in the Tasini case.

Ms. Peters stated plainly, and emphatically, that freelancers should be compensated for their
work. She opened by stating that the Supreme Court should affirm the decision of the court of
appeals which found in favor of authors. "In Tasini, the court of appeals ruled that newspaper
and magazine publishers who publish articles written by freelance authors do not automatically
have the right subsequently to include those articles in electronic databases. The freelance
authors assert that they have a legal right to be paid for their work. I agree that copyright
law requires the publishers to secure the authors' permission and compensate them for
commercially exploiting their works beyond the scope of section 201 (c) of the Copyright Act,"
she told McGovern.

Peters also rejected the publishers' protests that recognizing the authors' rights would mean
that the publishers would have to remove the affected articles from their databases. "The issue
in Tasini should not be whether the publishers should be enjoined from maintaining their
database of articles intact, but whether authors are entitled to compensation for downstream
uses of their works," she said.

Ms. Peters document delves into various aspects of the Copyright Act and explains why
legislative law backs up her views and supports the authors position. I have printed her letter
below in its entirety.

Dear Congressman McGovern:

I am responding to your letter requesting my views on New York Times v. Tasini. As you know, the
Copyright Office was instrumental in the 1976 revision of the copyright law that created the
publishers' privilege at the heart of the case. I believe that the Supreme Court should affirm
the decision of the court of appeals.

In Tasini, the court of appeals ruled that newspaper and magazine
publishers who publish articles written by freelance authors do not automatically have the
right subsequently to include those articles in electronic databases. The publishers, arguing
that this ruling will harm the public interest by requiring the withdrawal of such articles from
these databases and irreplaceably destroying a portion of our national historic record,
successfully petitioned the Supreme Court for a writ of certiorari.

The freelance authors assert that they have a legal right to be paid for their work. I agree
that copyright law requires the publishers to secure the authors' permission and compensate them
for commercially exploiting their works beyond the scope of section 201(c) of the Copyright Act.
And I reject the publishers' protests that recognizing the authors' rights would mean that
publishers would have to remove the affected articles from their databases. The issue in Tasini
should not be whether the publishers should be enjoined from maintaining their databases of
articles intact, but whether authors are entitled to compensation for downstream uses of their
works.

The controlling law in this case is 17 U.S.C. 201(c), which governs the relationship between
freelance authors and publishers of collective works such as newspapers and magazines. Section
201(c) is a default provision that establishes rights when there is no contract setting out
different terms. The pertinent language of 201(c) states that a publisher acquires "only" a
limited presumptive privilege to reproduce and distribute an author's contribution in "that
particular collective work, any revision of that collective work, and any later collective work
in the same series."

The Supreme Court's interpretation of section 201(c) will have important consequences for
authors in the new digital networked environment. For over 20 years, the Copyright Office worked
with Congress to undertake a major revision of copyright law, resulting in enactment of the 1976
Copyright Act. That Act included the current language of 201(c), which was finalized in 1965.of
interests.

Although, in the words of Barbara Ringer, former Register and a chief architect of the 1976 Act,
the Act represented "a break with the two-hundred-year- old tradition that has identified
copyright more closely with the publisher than with the author" and focused more on safeguarding
the rights of authors, freelance authors have experienced significant economic loss since its
enactment. This is due not only to their unequal bargaining power, but also to the digital
revolution that has given publishers opportunities to exploit authors' works in ways barely
foreseen in 1976. At one time these authors, who received a flat payment and no royalties or
other benefits from the publisher, enjoyed a considerable secondary market. After giving an
article to a publisher for use in a particular collective work, an author could sell the same
article to a regional publication, another newspaper, or a syndicate. Section 201(c) was
intended to limit a publisher's exploitation of freelance authors' works to ensure that authors
retained control over subsequent commercial exploitation of their works.

In fact, at the time 201 came into effect, a respected attorney for a major publisher observed
that with the passage of 201(c), authors "are much more able to control publishers' use of their
work" and that the publishers' rights under 201(c) are "very limited." Indeed, he concluded that
"the right to include the contribution in any revision would appear to be of little value to the
publisher." Kurt Steele, "Special Report, Ownership of Contributions to Collective Works under
the New Copyright Law," Legal Briefs for Editors, Publishers, and Writers (McGraw-Hill, July
1978).

In contrast, the interpretation of 201(c) advanced by publishers in Tasini would give them the
right to exploit an article on a global scale immediately following its initial publication, and
to continue to exploit it indefinitely. Such a result is beyond the scope of the statutory
language and was never intended because, in a digital networked environment, it interferes with
authors' ability to exploit secondary markets. Acceptance of this interpretation would lead to a
significant risk that authors will not be fairly compensated as envisioned by the compromises
reached in the 1976 Act. The result would be an unintended windfall for publishers of collective
works.

The Public Display Right

Section 106 of the Copyright Act, which enumerates the exclusive rights of copyright owners,
includes an exclusive right to display their works publicly. Among the other exclusive rights
are the rights of reproduction and distribution. The limited privilege in ß201(c) does not
authorize publishers to display authors' contributions publicly, either in their original
collective works or in any subsequent permitted versions. It refers only to "the privilege of
reproducing and distributing the contribution." Thus, the plain language of the statute does not
permit an interpretation that would permit a publisher to display or authorize the display of
the contribution to the public.

The primary claim in Tasini involves the NEXIS database, an online
database which gives subscribers access to articles from a vast number of periodicals. That
access is obtained by displaying the articles over a computer network to subscribers who view
them on computer monitors. NEXIS indisputably involves the public display of the authors' works.
The other databases involved in the case, which are distributed on CD-ROMs, also (but not
always) involve the public display of the works. Because the industry appears to be moving in
the direction of a networked environment, CD-ROM distribution is likely to become a less
significant means of disseminating information.

The Copyright Act defines "display" of a work as showing a copy of a work either directly or by
means of "any other device or process." The databases involved in Tasini clearly involve the
display of the authors' works, which are shown to subscribers by means of devices (computers and
monitors).

To display a work "publicly" is to display "to the public, by means of any device or process,
whether the members of the public capable of receiving the performance or display receive it in
the same place or in separate places and at the same time or at different times." The NEXIS
database permits individual users either to view the authors' works in different places at
different times or simultaneously.

This conclusion is supported by the legislative history. The House
Judiciary Committee Report at the time 203 was finalized referred to "sounds or images stored in
an information system and capable of being performed or displayed at the initiative of
individual members of the public" as being the type of "public" transmission Congress had in
mind.

When Congress established the new public display right in the 1976 Act, it was aware that the
display of works over information networks could displace traditional means of reproduction and
delivery of copies. The 1965 Supplementary Report of the Register of Copyrights, a key part of
the legislative history of the 1976 Act, reported on "the enormous potential importance of
showing, rather than distributing copies as a means of disseminating an author's work" and "the
implications of information storage and retrieval devices; when linked together by
communications satellites or other means," they "could eventually provide libraries and
individuals throughout the world with access to a single copy of a work by transmission of
electronic images." It concluded that in certain areas at least, "'exhibition' may take over
from 'reproduction' of 'copies' as the means of presenting authors' works to the public." The
Report also stated that "in the future, textual or notated works (books, articles, the text of
the dialogue and stage directions of a play or pantomime, the notated score of a musical or
choreographic composition etc.) may well be given wide public dissemination by exhibition on
mass communications devices."

When Congress followed the Register's advice and created a new display right, it specifically
considered and rejected a proposal by publishers to merge the display right with the
reproduction right, notwithstanding its recognition that "in the future electronic images may
take the place of printed copies in some situations." H.R. Rep. No. 89-2237, at 55 (1966).

Thus, 201(c) cannot be read as permitting publishers to make or authorize the making of public
displays of contributions to collective works.

Section 201(c) cannot be read as authorizing the conduct at the heart of Tasini. The publishers
in Tasini assert that because the copyright law is "media-neutral," the 201(c) privilege
necessarily requires that they be permitted to disseminate the authors' articles in an
electronic environment. This focus on the "media-neutrality" of the Act is misplaced.

Although the Act is in many respects media-neutral, e.g., in its
definition of "copies" in terms of "any method now known or later developed" and in 102's
provision that copyright protection subsists in works of authorship fixed in "any tangible
medium of expression," the fact remains that the Act enumerates several separate rights of
copyright owners, and the public display right is independent of the reproduction and
distribution rights. The media-neutral aspects of the Act do not somehow merge the separate
exclusive rights of the author.

Revisions of Collective Works

Although 201(c) provides that publishers may reproduce and distribute a contribution to a
collective work in three particular contexts, the publishers claim only that their databases are
revisions of the original collective works.

Although "revision" is not defined in Title 17, both common sense and the dictionary tell us
that a database such as NEXIS, which contains every article published in a multitude of
periodicals over a long period of time, is not a revision of today's edition of The New York
Times or last week's Sports Illustrated. A "revision" is "a revised version" and to "revise" is
"to make a new, amended, improved, or up-to-date version of" a work. Although NEXIS may contain
all of the articles from today's New York Times, they are merged into a vast database of
unrelated individual articles. What makes today's edition of a newspaper or magazine or any
other collective work a "work" under the copyright law -- its selection, coordination and
arrangement -- is destroyed when its contents are disassembled and then merged into a database
so gigantic that the original collective work is unrecognizable. As the court of appeals
concluded, the resulting database is, at best, a "new anthology," and it was Congress's intent
to exclude new anthologies from the scope of the 201(c) privilege. It is far more than a new,
amended, improved or up-to-date version of the original collective work.

The legislative history of 201(c) supports this conclusion. It offers, as examples of a revision
of a collective work, an evening edition of a newspaper or a later edition of an encyclopedia.
These examples retain elements that are consistent and recognizable from the original collective
work so that a relationship between the original and the revision is apparent. Unlike NEXIS,
they are recognizable as revisions of the originals. But as the Second Circuit noted, all that
is left of the original collective works in the databases involved in Tasini are the authors'
contributions.

It is clear that the databases involved in Tasini constitute, in the words of the legislative
history, "new" "entirely different" or "other" works. No elements of arrangement or coordination
of the pre-existing materials contained in the databases provide evidence of any similarity or
relationship to the original collective works to indicate they are revisions. Additionally, the
sheer volume of articles from a multitude of publishers of different collective works
obliterates the relationship, or selection, of any particular group of articles that were once
published together in any original collective work.

Remedies

Although the publishers and their supporters have alleged that significant losses in our
national historic record will occur if the Second Circuit's opinion is affirmed, an injunction
to remove these contributions from electronic databases is by no means a required remedy in
Tasini. Recognizing that freelance contributions have been infringed does not necessarily
require that electronic databases be dismantled. Certainly future additions to those databases
should be authorized, and many publishers had already started obtaining authorization even
before the decision in Tasini.

It would be more difficult to obtain permission retroactively for past infringements, but the
lack of permission should not require issuance of an injunction requiring deletion of the
authors' articles. I share the concern that such an injunction would have an adverse impact on
scholarship and research. However, the Supreme Court, in Campbell v. Acuff-Rose Music, Inc.,and
other courts have recognized in the past that sometimes a remedy other than injunctive relief is
preferable in copyright cases to protect the public interest. Recognizing authors' rights would
not require the district court to issue an injunction when the case is remanded to determine a
remedy, and I would hope that the Supreme Court will state that the remedy should be limited to
a monetary award that would compensate the authors for the publishers' past and continuing
unauthorized uses of their works. Ultimately, the Tasini case should be about how the authors
should be compensated for the publishers' unauthorized use of their works, and not about whether
the publishers must withdraw those works from their databases.

Sincerely,

Marybeth Peters

Register of Copyrights