Web Techniques Magazine
December 1997
Volume 2, Issue 12

Doing Justice to the Web

Electronic Publishers Win Big
Over Freelancers

By Catherine Sansum Kirkman

Electronic publishers won a big victory over freelance writers in a recent court case brought by the president of the National Writers Union, Jonathan Tasini, against The New York Times, LEXIS-NEXIS, and other major online publishers. The case was brought as a test case by the freelance writers union, in an attempt to obtain compensation for use of their work in cyberspace. Although the case may be appealed, the electronic publishers were able to defeat it before it got to trial. Publishers are breathing a sigh of relief, and writers are licking their wounds, now that articles by freelance writers can be republished without permission or compensation as part of an online version of a newspaper or magazine.

The Tasini case was a big, big case. It was filed in 1993 in federal court in the Southern District Court of New York, known in legal circles as a leader in the area of copyright-law decisions, because of its location in New York City. The case focused on whether print publishers can acquire online rights from freelancers without using a written contract that specifically transfers the electronic rights. The writers argued that industry custom dictated that freelance writers only transferred "first-print" rights when they sold articles to a periodical. Other rights, such as syndication rights, had to be transferred by a separate written agreement. Also, the writers argued, the republication of works via a computer screen implicates the copyright law's separate "public display" rights, and the publishers needed to get separate permission to exercise these rights.

Publishers Praise Section 201(c)

Why did the writers lose? The publishers had compelling arguments in their favor, one of which the court found most persuasive. They asserted that industry custom permitted republication on microfilm or microfiche, and that republication in electronic format was nothing more than a "revision" of a "collective work" which, under Section 201(c) of the Copyright Act, they can make without written permission. This argument was based on the definition of a magazine or newspaper as a "collective work," comprising numerous individual pieces of individual authorship. The author of the collective work holds a copyright not in the separate pieces, but in the selection, order, and arrangement of the entire magazine or periodical.

Section 201(c) provides that the copyright in each separate contribution to a collective work is distinct from that in the collective work as a whole, and vests in the author of the contribution. Thus, the New York Times owns the copyright to the newspaper as a "collective work," while the individual freelance writers retain ownership of the copyrights to individual articles. (Any articles written by New York Times employees would be owned by the newspaper, because they would be "works-for-hire," not the product of independent freelancers.)

In the absence of an express transfer of rights by the freelancer, the publisher of 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."

"Any" Revision is Permitted

It was that right to make "any revision" of the collective work that persuaded the court, and slid the camel's nose under the tent. Examples of permitted revisions in the legislative history of the Copyright Act included reprinting an article in a later edition of an encyclopedia or magazine, but not reprinting the article in a different magazine or work. However, these examples (from 1976) do not necessarily express the outer bound of "any revision." The publishers argued that putting entire magazines or newspapers on CD-ROM or in the NEXIS database constituted a "revision" because a single issue could still be accessed and viewed online. For example, a NEXIS user could search for the New York Times by date, and pull up all of the articles from that date. Thus, a recognizable "revision" of the newspaper existed in online form, and was permissible under Section 201(c).

According to the court:

The Court does not take lightly that its holding deprives plaintiffs of certain important economic benefits associated with their creations. This does not result from any misapplication of Section 201(c) however, but from modern developments which have changed the financial landscape of publishing.

Public Display Online

One issue remained-could the publisher actually allow the use of the online revision of its newspaper without obtaining additional permission from the writer to "display" it on a computer screen? The writers reminded the court that the exclusive right to publicly display a magazine article is included as part of the author's copyright. They argued that by its own terms, Section 201(c) only allows publishers to "reproduce and distribute" the revisions, but does not include the right to "display" the revisions.

With print media, the display right has not been an issue for writers, because the doctrine of "first sale" applies to the display right. This means that the consumer who buys a copy of a newspaper or magazine is entitled to display it publicly to viewers at the place where the copy is located. This means that the copyright police cannot get you for publicly displaying your newspaper while you are reading it on the train, and the owner of a painting or sculpture can place the work in a public place for viewing. But it has not been at all clear that anything allows a work to be displayed online without the copyright owner's permission.

The display right is important to control in cyberspace, because all sorts of copyright materials are posted online for display, viewing, and browsing by the public. The Copyright Act says that:

To "display" a work means to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process, or in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.

The court in Tasini resolved this issue by deciding that the display right was "incidentally" included in the publisher's rights to reproduce and distribute its revised work. The court looked at the definition of "copies" in the Copyright Act and noted that copies are tangible objects from which a work can be "perceived, reproduced or otherwise communicated." According to the court:

The right to reproduce a work, which necessarily encompasses the right to create copies of that work, presupposes that such copies might be perceived from a computer terminal.

The only problem with this reasoning is that it seems to prove a little too much. It could completely obliterate the copyright owner's public-display right when someone else holds the reproduction right. The creation of copies also presupposes that they will be communicated or distributed. Should we say that these rights are also incidentally included in the reproduction right? As a lawyer representing publishers and as a writer, I think I can easily see both sides of the Tasini case. I was persuaded that "any revisions" could include CD-ROMs and online databases. But the resolution of the display-right issue leaves me somewhat less persuaded.

Rulings for Writers

The decision actually included two victories for writers. First, the court rejected the idea that online rights were transferred by the writer when he cashed the publisher's check, which included a notation on it granting electronic rights. The writers denied there was any agreement to transfer those rights. The court held that the publisher:

...cannot now rely upon its check legends to give retroactive effect to supposed unspoken agreements concerning electronic rights in plaintiffs' articles.

Second, the court rejected the notion that a written contract that granted the publisher "first publication rights" included the right to publish first in any and all media. The court held that by first publishing in print, the publisher had exhausted its first publication rights, and could not thereafter republish in electronic form. It was unclear whether the publisher could choose to first publish simultaneously in multiple media, but it is clear that publishers will want to clarify this in their contracts.

Industry Trends

The trend in the industry is clearly toward signed written contracts between publishers and writers. Publishers want certainty so that they can exploit their ownership rights in electronic media. They would rather rely on the contract process, where they have the bargaining power, than on fighting with writers in courts across the land. After the Tasini case was filed, many newspaper and magazine publishers responded by changing their policies to expressly cover electronic publishing.

In 1995, the New York Times made a policy decision that its freelance contributors would now be writing on a work-for-hire basis, without additional payments for electronic and other reuses. Thus, regardless of outcome in the Tasini case, which was then pending, the Times intended to have control in the future over this issue. Of course, author organizations such as the American Society of Journalists and Authors and the Authors' Guild protested this policy, and many prominent authors publicly condemned the Times' action. In 1996 it was reported that the Times changed its position on work-for-hire status to exempt contributors to special sections like the Magazine, Commentary, OpEd and Book Review, and to allow editors for the Travel section and the Arts and Leisure section to grant exemptions at their discretion.

Notwithstanding the outcome in the Tasini case, writers can still benefit from collective action by groups such as the National Writers Union (NWU). If a writer knows, for example, that other writers are able to place certain limitations on the reuse of their work when dealing with a particular publisher, he is in a better position to argue for and obtain the same treatment.

Some publishers have given in on the electronic-rights issue. In 1995, Ski and Skiing magazines, both owned by the Times Mirror Company, agreed to pay reuse fees to authors for use of their work on the SkiNet Web site. According to Irvin Muchnick, assistant director of the NWU, the reuse fee for posting the SkiNet articles online is 10 percent of the original print-rights fee, with the base fee subject to increases commensurate with the increase in the number of users who access the Web site. In 1996 Harper's Magazine announced a new policy of splitting past and future revenues from electronic publishing with authors. Publishers Weekly also announced its intention to pay for past electronic use of material and to establish a royalty policy for future use of digitized materials.

End Game

It is likely that the writers will appeal the decision before giving up their fight against electronic publishers. As Jonathan Tasini put it, "When publishers do find the pot of gold at the end of the electronic rainbow, we have a right to share it." However, the more efforts are made by writers in court to gain legal advantage, the more publishers will look to nail down detailed, unambiguous written contracts to obtain all the rights they need for their business, regardless of any court's decision. Legal decisions like this one obviously give the winner more clout in contract negotiations. Publishers should be expected to use this leverage to obtain all the rights they need to publish successfully in the impending electronic century.

Catherine is a cyberspace attorney with the law firm of Wilson Sonsini Goodrich & Rosati in Palo Alto, CA, and is solely responsible for the content of this column. She can be contacted at ckirkman@wsgr.com.
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Last modified: 10/21/97