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					                         American Bar Association
                    Section of Intellectual Property Law

          The 17th Annual Intellectual Property Law Conference

                     Electronic Publication After Tasini
                             Jeffrey P. Cunard
                           Debevoise & Plimpton

                             April 11-12, 2002
                             Washington, DC

         The Holding in Tasini

        Last June, the Supreme Court rendered its landmark decision in New York Times
Co. v. Tasini, 121 S. Ct. 2381 (2001). In a 7-2 decision, the Court held that, absent
express consent, the republication of print periodicals in electronic formats infringes the
copyrights in freelancers‟ contributions. The particular provision of the Copyright Act at
issue in the case provides that a publisher does have the privilege to publish or republish
a contribution to a collective work “as part of that particular collective work, any revision
of that collective work, and any later collective work in the same series,” 17 U.S.C. §
201(c). Based on the legislative history of this provision, it had been well understood
that the publisher does not have the right to include the work in a new anthology or
entirely different publication or collective work.

        The core of the holding in Tasini is that the Section 201(c) privilege does not
include the right to include a contribution in an electronic format from which an
individual may retrieve and perceive that contribution separate from the rest of the
collective work. These formats include electronic databases, such as the NEXIS
electronic library, as well as CD-ROMs, in which entire pages as they appeared in print
were reproduced.

       With respect to all electronic formats in which a user can search for and retrieve
individual articles, the Court held that the articles – at least from the user‟s point of view
– do not appear as “part of” that “particular collective work” or “any revision of that
work.” 121 S. Ct. at 2390-91. Accordingly, the Court found that Section 201(c) did not
permit publication without consent. Writing for the majority, Justice Ruth Bader
Ginsburg‟s opinion focused, in this regard, on the fact that the user using an electronic
database would not perceive them as having preserved the original sequence of pages, as
they appeared in the hard copy editions of those periodicals. In short, said the Court,
publishers that had licensed freelance content for inclusion in databases such as NEXIS
and CD-ROMs had infringed the freelancers‟ copyrights.

        Justice John Paul Stevens authored a dissent, in which Justice Stephen Breyer
joined. That dissent endorsed several of the positions advanced by the publishers,
including that electronic republication benefits freelance contributors (and does not harm
their ability to exploit their individual works), that a collection of files corresponding to a
single edition of a newspaper can be a privileged “revision”, and that imposing liability
on publishers will result in the mass deletion of freelance works from electronic

        As summarized below, the Court‟s decision in Tasini has generated numerous
legal and practical questions that will undoubtedly occupy courts, publishers, and
freelance authors for years to come.

         The Rationale

        The Court‟s decision, though affirming that of the Second Circuit, departed from
the rationale of the lower court in some significant respects. The defendants below had


argued – and the District Court had held – that an electronic republication of a collective
work was privileged as a “revision” of the hard copy edition. Tasini v. New York Times
Co., 972 F. Supp. 804 (S.D.N.Y. 1997). The Second Circuit reversed. Judge Ralph K.
Winter, writing for the Second Circuit, concluded that electronic formats fell outside the
privilege to republish a contribution as a “revision of” the collective work because
electronic formats fail to preserve both the “selection and arrangement” of the print
edition; because the inclusion of multiple issues in an electronic database or on a CD-
ROM created a “new anthology” of articles (i.e., a new work), rather than a collection of
periodicals; and because users can retrieve individual articles without retrieving the
entirety of the periodical.

        The Supreme Court adopted the last of these reasons. It did not decide whether
both “selection and arrangement” are required to maintain the copyright status of a work.
In addition, it did not decide whether the databases themselves constitute new, infringing

         Remaining Legal Issues

         The Supreme Court focused, as noted, on the articles “as presented to, and
perceptible by, the user of the databases.” 121 S. Ct. at 2390. The Court was influenced
by what it concluded was a singularly relevant fact: a user of an electronic database does
not have to “page through” an issue of a periodical in order to locate and retrieve a single
article. In this regard, the Court distinguished electronic formats from microform.
Microform may contain multiple editions of a newspaper or magazine on a single sheet or
roll; the Supreme Court held that that format is noninfringing because the contributions
are not “disconnected” from their “original context.” Id. at 2391.

         Nevertheless, one of the formats at issue in Tasini (GPO) also presented the
articles just as they had appeared in the paper edition, surrounded by other editorial and
advertising material. The Court distinguished this format from microfilm because the
user of GPO who “wishes to see other pages [apart from those on which the retrieved
article appears] may not simply „flip‟ to them.” Id. at 2386 n.2. Leaving aside that the
Court‟s factual conclusions in this respect were unsupported by the record evidence, the
question clearly left unresolved by the decision is whether there are electronic formats on
the continuum between NEXIS and microform that are noninfringing.

         Specifically, would exact reproductions of pages as they appeared in print, in
sequence so that a reader could “scroll through” as he or she would at a microfilm reader,
be noninfringing? What if a CD-ROM or database included a search function so that a
reader could go directly to a desired page (substituting for the scroll knob on a microfilm
reader and, perhaps, for a separate paper index)? Perhaps the better view of the decision
is that if a format permits articles to be located only by paging through the periodical,
page-by-page, then that form of republication should fall within the privilege.


         The Greenberg Decision

         Percolating through the courts just behind the Tasini case is Greenberg v.
National Geographic Society, which was decided by the Eleventh Circuit last year. 244
F.3d 1267 (11th Cir. 2001). That case involves a CD-ROM set containing photographic
digital reproductions of every page of every issue of the National Geographic magazine.
In preparing the compilation, the magazine had created an opening animated montage,
using a photograph taken by a freelance contributor. He sued. The decision of the
Eleventh Circuit held that the set was infringing. Read together with the decision of the
Supreme Court in Tasini, Greenberg suggests that publishers may be quite limited in
making use of the Section 201(c) privilege to republish their collective works in digital

        The first rationale for the holding in Greenberg was that the montage of famous
covers was a new infringing work. 244 F.3d at 1274. This holding may have somewhat
limited relevance because publishers need not include attractive new features merely to
make their works available in digital format.

        The second rationale, however, was that the CD-ROMs also included a computer
program that allowed users to search for articles. In the view of the Eleventh Circuit,
storing such a computer program, the digitized issues of the magazine and the animated
montage, all on a single CD-ROM, resulted in the creation of a new infringing collective
work that was not within the scope of Section 201(c). Id. at 1273. (The Eleventh Circuit
went out of its way to distinguish Tasini on the ground that the CD-ROM set is a “new
work,” and not a “mere electronic reproduction” in another medium. Id. at 1274 n.14.)
In conclusion, at least in the Eleventh Circuit, the decision creates a very significant
barrier for digitizing publications that include any freelance content for which the
publisher does not have an explicit contract granting electronic publication rights,
because electronic formats depend on computer programs for their utility.

        The Supreme Court denied certiorari in Greenberg, although it certainly could
have remanded the case for re-analysis in light of Tasini. 122 S. Ct. 347 (2001). In
choosing not to take the case, the Supreme Court did not help clear up the uncertainty left
by its decision in Tasini.

         Broader Legal Implications of Tasini

        The Tasini decision also has raised more general issues. As noted above, the
Court analyzed whether the freelancers‟ contributions appeared as “part of” a collective
work by considering how the viewer perceived search results. The Court characterized
the database contents as “thousands or millions of files containing articles from thousands
of collective works,” 121 S. Ct. at 2391, rather than as numerous collective works
themselves, and rested its decision squarely on users‟ ability to retrieve and download
individual articles. The Court further stated that users‟ ability to retrieve the entirety of
any single collective work – a “noninfringing document” – was irrelevant to the
database‟s own infringement. Id. at 2393.


         This analytic approach is noteworthy because Tasini is now the first case to
impose direct liability based on how users may read or perceive a copy, rather than on the
contents of the copy. That is, the Court found that the underlying databases were
infringing because of the use to which their subscribers put them. Before Tasini, end
users‟ uses would largely have seemed relevant in connection with an argument that
publishers had engaged in contributory or vicarious infringement; however, the Tasini
plaintiffs explicitly disavowed reliance on such theories. It is unclear whether this strand
of the Court‟s analysis will seep into other disputes, such as lawsuits over whether file-
sharing services and vendors of software programs enabling file sharing are engaged in
direct, contributory or vicarious infringement because they allow users to make
unauthorized copies of audio and video files.

        “Perception” as a standard also may affect copyright law more generally. If
perception determines whether a collective work exists, then perhaps an arrangement of
individual paintings by individual artists hanging in a gallery window constitute an
infringing collective work: they are perceived by passers-by as part of a unified whole.
More to the point, does opening separate browser windows on different parts of a
computer screen create an infringing collective work (leaving issues of fixation aside)?
Or perhaps, and more rationally, will the Court‟s new “perception” standard only work in
one direction? Under a one-way standard, collective works may be chopped into their
component bits, but are never actually created, by user perception.

         The Pending Class Actions; Damages

        Other questions arise from the four follow-on class actions initiated in the wake of
the Second Circuit‟s decision in Tasini. Three of those class actions, each aimed at
databases, have been consolidated. In re Literary Works in Electronic Databases
Copyright Litigation, MDL No. 1379 (S.D.N.Y. filed September 20, 2001) (U.S. Dist.
Judge George B. Daniels). The parties are currently involved in mediation. A separate
class action against the New York Times is pending before the same district judge. The
Authors Guild, Inc. v. The New York Times Co., No. 01 Civ. 6032 (GBD) (S.D.N.Y. filed
July 3, 2001). The Tasini case itself has been remanded for the damages phase.

        With respect to the publishers‟ liability, Justice Ginsburg wrote that the parties
“may enter into an agreement allowing continued electronic reproduction,” suggesting
that “numerous models” may be used for “distributing copyrighted works and
remunerating authors.” 121 S. Ct. at 2392. Though these concluding thoughts of the
majority opinion cite to Section 118(b) of the Copyright Act (uses by a public
broadcasting entity of certain copyrighted works) and to the Court‟s decision in
Broadcast Music, Inc. v. Columbia Broadcasting Systems, Inc., 441 U.S. 1 (1979), which
analyzed blanket music licensing regimes, the Court offered no particular views on the
damages issues.

        The damages issues in the class actions are extremely complex, regardless of
whether the parties negotiate a settlement or proceed with the litigation. Just by way of
example, one of the class actions alleged the existence of two subclasses of freelance
articles: those that had been registered within three months of publication and those that


had not been so registered. The first subclass would be entitled to statutory damages if
the case went to trial, and could possibly receive favored treatment in any settlement.
Authors of articles that were not registered within three months of publication may not
elect statutory damages and at most may recover their actual damages in addition to the
infringer‟s profits, to the extent the two do not overlap.

        Furthermore, methodologies and proof needed to calculate actual damages and
profits may prove to be tricky. The fair market value of electronic rights, for which
publishers historically did not pay a separate sum, is certain to be a contentious issue.
Moreover, different periodicals use different amounts of freelance content and, in most
cases, it is impossible to tell which freelance articles have actually been accessed or
downloaded, which makes the infringer‟s profits difficult to calculate.

        The database defendants have indemnity agreements with the publishers covering
infringement actions. Because there are so many different publishers involved, however,
with the number of contributions varying significantly among their respective periodicals,
calculating the indemnities could pose even more problems, particularly in the context of
a negotiated settlement.

         Publishers’ Responses

        The database defendants rely on publishers not only for indemnities, but also for
information about their respective contributions. After Tasini was announced, each
publisher had to make certain decisions about how to react. Many identified freelance
content for which they lacked an explicit grant of electronic rights; to minimize their
potential exposure, they instructed the database defendants to remove that content from
their data bases. Although NEXIS and Westlaw also offer individual authors a process
by which their articles may be removed from the database, as a rule publishers are
responsible for identifying content that needs to be deleted. CD-ROM products that
contain freelance articles also are being withdrawn. And archival digitization projects
have been put on hold.

        Publishers are also attempting to ensure that the decision rendered by the Supreme
Court in Tasini largely will affect only historical contracting practices. Even before the
Second Circuit or the Supreme Court acted, many publishers had already formalized or
revised their contracts with freelancers to ensure that they expressly obtained the rights to
use, reuse and license freelancer content in any electronic format. Others have taken
Tasini as a reason to reexamine their contracts and, if necessary, change them to reflect
the decision. Although contracts are likely to vary, draft language to accomplish such a
result might resemble the following:

                 You hereby grant a perpetual, worldwide, royalty-free,
                 paid-up, non-exclusive license to use, reproduce, distribute,
                 publish and otherwise communicate your contribution as
                 part of our publication, which rights include our right, or
                 that of any of our affiliates or licensees, to reproduce,
                 distribute, publish and otherwise communicate your


                 contribution as part of our publication in any and all form
                 of media, whether now known or as may hereafter be
                 developed, including, but not limited to, hard copy,
                 electronic databases, microfilm, online services, World
                 Wide Web sites, and CD-ROMs, whether or not your
                 contribution may be individually accessed or retrieved from
                 such form of media. Except as set out herein, you retain all
                 other rights to publish or otherwise use your contribution
                 without obtaining our consent.

        The publishers‟ actions with respect to both deletions and current contracts have
dismayed freelancers and some of their allies. As the majority and the dissenting opinion
of the Court make clear, probably no one was too surprised at the fact that at least some
publishers have asked that freelancers‟ articles be deleted from electronic databases.

        Nevertheless, press reports and anecdotal evidence suggests that some of the
librarian communities (who, in their amicus curiae brief, declined to support the
publishers) are now finding that at least some of the databases on which many of their
patrons have come to rely have gaps of uncertain dimensions. Although the size of the
databases as a whole means that, percentagewise, not much has changed, the uncertainty
alone is seen by some researchers as creating substantial problems, and is particularly
difficult for researchers focusing on areas in which publishers often rely on freelancers‟
articles (substantial pieces in magazines, travel reporting, etc.). Reportedly, however,
some librarians are seeing a bright side: They believe that students will have to learn
how to use non-electronic resources once again. Regardless of whether students will
actually dive into hard copies in library stacks, or use microforms, or will, instead, use
more limited sources that are easier to use, the consequences of Tasini may mean that
some libraries and other research institutions could lose ready access to complete
periodicals, if they do not have the resources to acquire or preserve them in hard copy.

         Further Moves by Freelancers

        Some freelancers have expressed dismay that it is no longer as easy as it once was
for the public to have access to their works. Other freelancers have registered public
protests against current contracts, which increasingly require the freelancer to grant all
rights to the publisher or provide that the work under contract is a work for hire. The
National Writers Union is encouraging freelancers to resist signing such contracts.

        If enough freelancers were to reject such contracts, and if publishers would find it
impossible to find other writers to replace those who declined to sign the new contracts,
then the objecting freelancers, as a group, might have the power to enter into collective
discussions with publishers. Such discussions might be limited by potential antitrust
concerns, as well as by the limited membership of the National Writers Union and similar

        Freelancers have sought some relief in court with respect to contracts that they
find objectionable. Jonathan Tasini himself filed suit against the New York Times,


claiming that its current contracts are unlawfully coercive in that they require a freelancer
to give the Times all electronic rights in the freelancer‟s past articles for the Times if the
Times does not already have those rights. (Tasini also objected to the Times‟ restoration
request procedure, whereby authors could have their articles restored to electronic
databases in return for waiving their infringement claims.) His lawsuit was dismissed in
January 2002 on the ground that he lacked standing and that the complaint raised no
federal question. Tasini v. New York Times Co., No 01 Civ. 6154 (RLC) (S.D.N.Y. Jan.
24, 2002). Another lawsuit against the Boston Globe, alleging that similar contracts
violate Massachusetts state unfair business practices law, is pending. In January 2001,
the Superior Court denied a motion to dismiss that action. Marx v. Globe Newspaper
Co., Civ. Action No. 00-2579-F (Mass. Super. Ct. Jan. 11, 2001).

        Even assuming that certain freelancers are able to negotiate with publishers so
that they do not surrender their electronic republication rights in prior articles, nothing
prevents publishers from contracting for all rights for a single, fixed sum. In fact, that is
how the Tasini-compliant contracts work.

        Perhaps to avoid marketplace negotiations of the sort described, some freelancers
are suggesting that congressional intervention might be appropriate. One idea that they
have floated is to create a comprehensive licensing regime, so that freelancers would
receive royalties, via an ASCAP-like organization, throughout the life of their copyrights.

        Whatever the outcome, it is plain that the equilibrium between databases,
publishers and freelancers has been disrupted, and that it will take several years and lots
of hard work to sort out the new relationships.



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