 |
|||||||||||||||
 |
|||||||||||||||
 |
|||||||||||||||
 |
|||||||||||||||
|
|||||||||||||||
 |
|||||||||||||||
 |
|||||||||||||||
 |
 |
 |
 |
|
| Not So Fast – Publishers Limited in Use of Freelance Articles In the September/October 1997 D & G Digest, we reported on the decision by a federal district court in New York in the closely watched case, Tasini v. New York Times Co. The district court in Tasini ruled that, even absent a written agreement, when freelance writers provide articles for inclusion as part of a periodical, the publisher of the periodical has the right to reproduce the articles and include them in electronic databases featuring the periodical without further compensating the writers. Since the time of that initial decision, publishers of magazines and newspapers have moved even more aggressively in making their content available in electronic media. From electronic versions of the news at Web sites such as The New York Times on the Web, WSJ.com, CNNSI.com and others, to searchable electronic databases such as LEXIS/NEXIS, publishers and other media companies are looking to get the most out of "re-purposing" and finding secondary uses for their content. These new uses create a unique problem when the contributors to the original publications are not employees of the publishers, but rather work as freelance writers and photographers. The U.S. Court of Appeals for the Second Circuit reviewed this problem, and the district court's decision in Tasini, last fall. DISTRICT COURT FINDS FOR PUBLISHERS The plaintiffs in the original action were six freelance writers who had written articles for publication in various newspapers and magazines. The defendants were the publishers of these periodicals, including The New York Times, Newsday and Sports Illustrated, along with the owners of online and CD-ROM electronic databases, Mead Data Central Corp. and University Microfilms International. In addition to including the plaintiffs' articles in the printed versions of the periodicals, the defendants licensed to Mead Data Central the right to include each edition of their periodicals (including plaintiffs' articles) in Mead's LEXIS/NEXIS online searchable electronic database. Some of the defendants also licensed to University Microfilms International the right to reproduce each edition of their periodicals (including plaintiffs' articles) for use in UMI's searchable CD-ROM databases. In examining this case, the district court held first that these newspapers and magazines were "collective works" under the Copyright Act, meaning that the publishers owned the copyright in the collective works themselves, including such elements as the selection and arrangement of the articles and the layout and formatting of the publication. At the same time, each author continued to own the copyright in the individual articles included in each periodical. Thus, in order for the publishers to make secondary use of the articles, they were required to have obtained the necessary rights from the authors to do so. The district court found that, while the writers had oral agreements with some of the publishers and other publishers included notations regarding a grant of rights on the back of the pay checks they sent to the writers, none of the writers expressly transferred to the publishers the right to include their articles in any electronic databases. However, the district court held that the publishers did have the right to exploit the articles. Relying on Section 201(c) of the Copyright Act, the district court noted first that when an individual contributes a copyrighted work as part of a collective work "[i]n the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series." The district court then turned to the question of whether the inclusion of each edition of a periodical (and all the articles in that edition) in an electronic database constitutes a "revision" of the periodical for purposes of the Copyright Act and found that it would, so long as the electronic version was "substantially similar" to the original work. The district court found that the references in the database to the author of the article, the publication, the issue, the date of the original publication, and original page number where it appeared created a substantial similarity between the original publication and the electronic database "version" of the publication, despite the fact that original photographs, page layout, advertisements and other elements were excluded from the database "version." COURT OF APPEALS DISAGREES Following the district court's decision, the writers appealed to the U.S. Court of Appeals for the Second Circuit. In the spring of 1999, the Court of Appeals heard the parties' arguments and in the fall of 1999, rendered its decision. The Court of Appeals disagreed with the district court and found that the electronic databases could not be considered "revisions" of the original publications they featured. In reaching its decision, the Court of Appeals focused on two issues. First, the Court of Appeals placed significantly more weight than did the district court on the elements of the periodicals lost in the electronic database. While the Court of Appeals acknowledged that certain elements, such as the pagenumber and edition number, were preserved in the electronic database, it found that significant aspects of the original publications were missing. In particular, the Court found that the electronic databases did not include a "substantial portion" of what appeared in the original publication, such as photographs, maps and tables, and obituaries. Also missing from the electronic re-prints were arrangement and formatting decisions. Thus, for example, with respect to The New York Times, the court noted that the database did not indicate whether an article originally appeared above or below the fold. As a result, a user of the database might lose a sense of the importance attributed to that article by the editors of the newspaper. Second, the Court of Appeals noted that the publishers also prohibited the re-creation of the periodical in the electronic database. Thus, users, even if they retrieved all of the material in the database, would be unable to recreate the original publication, due to the missing content and lack of arrangement. Moreover, the Court of Appeals noted that The New York Times "actually forbids NEXIS from producing 'facsimile reproductions' of particular editions" of the newspaper. Together, these factors compelled the Court of Appeals to find that the electronic databases were not revisions at all. Rather, all that users of the database could retrieve was the pre-existing material that belonged to the original authors. Since the electronic database did not constitute a revision of the original periodicals, the Court of Appeals held that the publishers did not have the right to include the articles in the database. In rejecting the publishers' argument that the electronic databases constituted revisions in part because an end user could retrieve all of the articles from a particular edition of a periodical, the Court of Appeals noted that these publishers would not have the right to sell hard copies of each article individually, simply because they also sold all of the other articles found in the periodical individually. As a result, the publishers could not accomplish the same goal by reproducing the articles in an electronic database. A DIFFERENT OUTLOOK The decision by the Court of Appeals reflects a decidedly different outlook on the relationship between the freelance writer and the publisher from that espoused by the district court. Underlying the Court of Appeals' arguments was a restrictive interpretation of the rights granted to a publisher. The Court of Appeals repeatedly referred to the fact that Section 201(c) of the Copyright Act did not confer "rights" on the publisher, only "privileges." It appears that this distinction carried great weight with the Court of Appeals, as it noted that if the permissible uses by the publishers were as broad as the publishers argued, "it is not clear that the rights retained by the [writers] could be considered 'exclusive' in any meaningful sense." BROAD IMPLICATIONS The Court of Appeals decision in Tasini has potentially broad implications in this world of evolving media. Beyond the specifics of this case, this restrictive view of the rights granted by authors to media entities could impose a substantial burden on media entities. It could lead to other challenges by authors who contribute copyrighted materials for inclusion in periodicals or audiovisual works and to similar restrictions on the use of content in new media by media entities, whether such materials were licensed under oral or implied agreements as in Tasini or pursuant to written agreements that are interpreted narrowly by subsequent courts. These issues are particularly compelling today because media entities are using and re-using content in new media in ways that may not have been originally contemplated by the parties. One of the significant attributes of the Internet is the ease with which it allows users to search for data, information and other content. Beyond re-publishing articles from newspapers and magazines, the Internet can be used to search from a database of recipes that have been featured on morning television talk shows. Users can search for specific home improvement projects, together with project instructions, from a database of projects that have been featured on daytime home improvement programs. Television networks may allow searches for video downloads of prior news stories from their archives, which often include third party audio and visual clips. The issues initially encountered in Tasini will continue to arise for all media entities as they expand their services on the Internet and elsewhere. The Tasini decision demonstrates how important it is to document the transfer of rights from the original creators of material to the media entity distributing the material in a written agreement. Indeed, the district court and Court of Appeals both noted that New York Times Co. only accepts articles from freelance writers if they surrender all rights in the articles in a written agreement. Further, even if an agreement is in writing, it may not be helpful if it does not address the exploitation of the material in electronic and other new media. Media entities run the risk of an adverse ruling similar to Tasini if the agreement is silent or ambiguous as to those rights. Finally, media entities can minimize the risk of inadvertent infringements due to the use of material in new media by establishing formalized monitoring procedures to determine which material is fully owned by the media outlet, not subject to restrictions on exploitation, and which material is licensed from third parties, specifying the rights granted by the third party. © 2000 Davis & Gilbert LLP |
| Davis & Gilbert LLP • 1740 Broadway • New York, NY 10019 tel: 212.468.4800 • fax: 212.468.4888 |
|
| Privacy Policy • Terms & Conditions |