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Electronic Rights: Copyright Law & Collective Works

Lloyd L. Rich

Introduction

In 2001 three significant judicial decisions interpreted copyright law and publishing contracts as they related to electronic rights ("e-rights"). The decisions reached in The New York Times Co., Inc., et al. v. Jonathan Tasini, et. al., Greenberg v. National Geographic Society and Random House, Inc. v. Rosetta Books, LLC cases will all have an impact on publishers and authors as electronic publishing expands in the future. The decisions in these cases may provide the publishing industry with guidance in deciding some of the following e-rights issues: (1) What is a revision of a collective work? (2) Are e-rights granted implicitly by an author or must they be explicitly granted? (3) What is a book? and (4) Can a non-compete clause prevent an author from granting e-rights to someone other than the publisher of the author's printed book?

This article will discuss the Tasini and Greenberg cases, which have significance for all publishers but may have even greater importance for publishers of collective works. Collective works are usually publications such as reference books, anthologies, encyclopedias, magazines, newspapers, and newsletters where multiple freelance authors, illustrators and photographers provide the content. A forthcoming article will discuss the Rosetta Books case that sheds light on the issue of "What is a book?"

New York Times v. Tasini

Most of us in the publishing community are aware of the Tasini case, as it has been winding its way through the judicial system since the mid 1990s. Finally, in June 2001 a certain degree of closure was achieved when the United States Supreme Court issued its opinion and the result was a victory for freelance writers seeking to keep the electronic copyright of their work.

Tasini and other freelance writers licensed one time, North American print publication rights of their articles to The New York Times and other publications. The writers retained copyright ownership of their articles while the publishers held copyright ownership of the collective work, i.e., the publication as a whole, which contained the writers' articles.

After publishing the print version of the articles, the publishers permitted electronic publication of them in online databases and CD-ROM products. Consequently, the writers brought legal action against the publishers alleging that the electronic publication of their articles infringed their copyrights since the publishers had not been granted electronic publication rights.

The District Court ruling was a victory for the publishers. The court rejected the publishers' claim that their purchase of print publication rights automatically included electronic rights. However, it ruled that their electronic re-use did not violate the writer's copyright because the electronic revision of the print publication was permissible under Section 201(c) of the Copyright Act and did not require permission from the writers.

According to Section 201(c), the copyright in an author's contribution to a collective work belongs to the author unless the author transfers copyright ownership to the publisher. Copyright ownership of the collective work belongs to the publisher. A copyright owner of a collective work who does not have copyright ownership of the individual contributions to the collective work is only permitted to reproduce and distribute (1) the contribution as part of the collective work, (2) any revision of the collective work, and (3) any later collective work in the same series.

On appeal the Second Circuit Court reversed the District Court's decision, ruling that the Section 201(c) revision privilege did not protect the publisher against copyright infringement. The Second Circuit held that an electronic database was not a revision of the original print publication because when a user searched the database for a particular article that article appeared as a stand-alone and was not displayed within the context of the print publication to which it was contributed. The Circuit Court considered the electronic database as a "new" collective work since it no longer had the creative coordination and arrangement aspects of the print publication, and therefore, was not a revision permitted under Section 201(c).

The Supreme Court decision affirmed the writers' victory because an article is displayed to the user of the electronic database only as an individual article, without the context provided by the original print edition, including the opportunity to flip page to page to view the complete print edition. Specifically, the Supreme Court held that the "revision" privilege for collective works does not include re-publication of the writers' works in electronic databases. This decision also means that unless a freelancer specifically grants electronic rights to a publisher of a collective work then the freelancer controls these rights.

Greenberg v. National Geographic Society

Greenberg is a photographer who completed photographic assignments for the National Geographic Society ("National Geographic") over the course of 30 years. At Greenberg's request, National Geographic reassigned its copyrights in the pictures from these assignments back to Greenberg. In 1996, National Geographic, in collaboration with Mindscape began the development of a product called The Complete National Geographic ("CNG"), which is a 30 CD-ROM library that includes every issue of the National Geographic's magazine from 1888 to 1996 in digital format. The CNG included Greenberg's photographs and also used one of Greenberg's photographs as a cover image in a moving cover sequence that morphed one image into another until 10 different covers were displayed.

Greenberg initiated legal action against National Geographic alleging that National Geographic's re-use of his photographs in the CNG and in the cover sequence infringed his copyright in that Greenberg and not National Geographic controlled the e-rights in his photographs.

The District Court decision was a victory for National Geographic just as the District Court decision in Tasini was a victory for the publishers. The District Court held that even though Greenberg had not explicitly granted the e-rights in his photographs to National Graphic that the allegedly infringing CNG and cover sequence were a revision of a prior collective work that fell within National Geographic's privilege under Section 201(c).

On appeal the Eleventh Circuit reversed the District Court ruling that the Section 201(c) revision privilege did not protect National Geographic against copyright infringement when National Geographic had not explicitly secured the e-right to Greenberg's photographs. The Eleventh Circuit went on to say that common-sense copyright analysis requires a conclusion that National Geographic in collaboration with Mindscape created a new product in a new medium digital and not print, and for a new market that far exceeded the scope of the revision privilege permitted in Section 201(c) and therefore the National Geographic's use of a Greenberg's photographs in CD-ROM versions of the National Geographic Magazine created an infringing new work, not a privileged revision of the print publication. Important ramifications may also result from the Eleventh Circuit decision finding that the computer program used in CNG added an entirely new dimension to the print publication issues of the National Geographic Society Magazine in that it served as a storage repository and retrieval system for the images and content contained in each individual issue of National Geographic Society Magazine.

The National Geographic Society appealed the Eleventh Circuit Decision to the United States Supreme Court but the Supreme Court refused to hear the appeal. Therefore, the Supreme Court in effect sided with a freelance photographer in a case that sought to determine if freelancers should be compensated when their work is used as part of digital archives.

Conclusion

For many publishers, these cases may only have implications regarding collective works published a number of years ago where the freelancer did not explicitly grant e-rights usage to the publisher. Currently, most publishers are securing or at least attempting to secure all rights from their freelancers. However, questions remain about compensation for previous actions by publishers, the determination of what will pass as a revision, and possible changes to the copyright law.

The Tasini and Greenberg cases were passed back to the respective District Court to determine the damages the publishers owed the writers and photographer. However, the parties could reach an agreement about the continued use of the articles and photographs in the electronic databases, or if necessary, the courts and Congress could establish a model for the electronic distribution of copyrighted works and the compensation the copyright owners would receive for such distribution.

Immediately after the Tasini Supreme Court decision, The New York Times announced and ran ads stating that it would remove numerous articles written by freelance writers between 1980 and 1995 unless the writers released The New York Times from liability for previous copyright infringement and waived their rights to receive compensation for an article that had been included in an electronic database.

Meanwhile, many publishers are thought to be deleting freelancer articles from their electronic databases and have implemented new "work made for hire" contracts that require writers to relinquish the complete copyright in their work without receiving additional compensation.

The Tasini decision stills leaves unanswered questions, such as what should be a freelancer's compensation when their work is in an electronic database. Although this could be simply negotiated between author and publisher, it is also possible that Congress could establish a compulsory fee or royalty payment for the authors.

Another unanswered question is, under Section 201(c) could there be a non-infringing electronic revision of a print publication collective work. For example, would it be a non-infringing revision of a collective work if a search program displayed the print publication in its entirety so that the user after locating a particular article could flip through the entire publication? For example, the Supreme Court decision may not preclude a PDF file from being generated of an entire print publication, which could be downloaded or viewed in a Web browser, or perhaps the entire print publication could be converted to html and viewed in the browser. However, the Greenberg decision seems to indicate that any electronic revision of a print publication collective work that uses a computer program should be considered a new work and not a revision.

Therefore, when a publisher wants the electronic rights to any freelancer's creative work then the contract with the freelancer must state that these rights are granted to the publication. The publisher should negotiate use and compensation issues with freelancers in those situations where the freelancer had not previously granted electronic rights and electronic publication has already occurred or is planned for in the future.

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