|I was on vacation when the U.S. Supreme Court released its June 25
decision in the New York Times Co. v. Tasini case (http://www.supremecourtus.gov).
When I got back to my office a few days later, my e-mail and listserv in
boxes were crammed full of commentary, concerns, and questions. The court's
landmark decision, its immediate and long-term impact, and the reactions
of the publishing and database industry were the primary subjects for comment
among my library, academic, and industry colleagues.
The electronic tumult died down within a few days, but with many questions
left unanswered. Just as nature abhors a vacuum, these questions generated
reaction and counter-reaction within the publishing industry. The New York
Times Co., named defendant in the original lawsuit, announced plans to
delete freelance articles from its databases. Other database producers
followed suit. The Authors Guild, Jonathan Tasini, and others responded
by filing lawsuits alleging that these actions were designed to limit the
rights of freelance authors to have their articles published and to receive
compensation. These suits have beenconsolidated with similar actions and
the remains of the original Tasini lawsuit before the U.S. District
Court for the Southern District of New York (http://www.nysd.uscourts.gov).
The litigation over the Tasini ruling indicates that the issues
raised by the court are anything but resolved. So how do we in both the
database and the library communities survive in the interim? A careful
review of what the court did and did not say in the Tasini
will go a long way toward understanding and surviving its aftermath.
Copyright and Collective Works
The central issue in Tasini is whether publishers were infringing
freelance authors' contributions to collective works—such as newspapers,
journals, and magazines—when those collective works were republished in
electronic databases. The Copyright Act of 1976 (Title 17, United States
represented a change from previous law by recognizing separate copyrights
for an individual article published in a collective work and the collective
work itself. Previously, an article's author only retained copyright if
the publisher elected to recognize that right in the collective work—an
event that rarely happened. So at the threshold, the Tasini decision
mainly affects only those articles published since January 1, 1978—the
date the Copyright Act went into effect. At the other end, as a practical
matter, since the mid-1990s, most publishers have used their contracts
with freelance authors to secure electronic database publication rights.
Consequently, the Tasini
decision covers a window of articles from
about 1978 through 1995.
Another critical element is the status of the author as "freelance."
The Copyright Act and the Tasini decision both indicate that articles
written by the publishers' employees—reporters for a newspaper or magazine,
for example—or that are specifically commissioned by the publisher are
"works made for hire." Under the work-made-for-hire standard, the copyright
in articles written by employees or in specifically commissioned articles
resides with the employer. The publisher consequently holds both the copyright
in the individual article and the copyright in the collective work, leaving
no grounds for a dispute. Therefore, not every article published during
the 1980s and 1990s will be required to comply with Tasini.
There remain several hundred thousand articles in various databases
that may be infringing. The New York Times alone estimated that
over 100,000 articles, representing about 8 percent of its database, were
written by freelance authors.
A specific question arose about the publishing activities of academic
authors in scholarly journals. In the absence of a specific contract providing
for assignment of the copyright, it would appear that such material would
be considered freelance contributions. The authors are not employees ofthe
respective journals nor are the articles usually specifically commissioned,
so the work-made-for-hire standard is not met. Consequently, the authors
would control the copyright for articles republished in electronic databases.
Books, treatises, and certain articles that were specifically commissioned
by the publisher, however, would more likely fall under the work-made-for-hire
Digitization and Library Copying
Librarians were asking about the decision's impact on digitization
projects. Would permission need to be sought from authors instead of publishers?
By extension, the same question applies to other copying activities, such
as course packs, interlibrary loan, and course reserves in academic libraries.
The key to answering this is to look at the source material being utilized
for the copying or digitization. If the source material is not part of
an existing collective work (such as an authored text, archive of personal
papers, collection of photographs, etc.), then Tasini does not apply.
Of course, permission must still be obtained from the copyright holder,
be it the publisher or author, unless the source is in the public domain.
If the source material is from a collective work (such as a journal,
magazine, or newspaper), then Tasini will be a factor. The Tasini
court focused on the difference between the original collective work and
the subsequent publication of that work in an electronic database. As noted
above, the collective work and all of the material contained within the
collective work have a separate copyright—generally held by the publisher
of the collective work—from the individual articles. To the extent that
the source material is the original collective work, the publisher would
remain the contact point for permissions and royalties.
However, if the source is a later republication of the collective work,
then there are concerns. If the source is an electronic database, in the
post-Tasini world it would theoretically contain only non-infringing
material with all freelance articles being either purged or permitted.
At a minimum, careful scrutiny of the licensing agreements will be in order.
However, source material such as microform or print anthologies that could
not be purged may present some risk. Verification of the copyright status
from the publisher is probably the best survival strategy.
Also of concern is Tasini's impact on journal-article aggregators.
These vendors package electronic content with a common search engine and
offer it for sale. To the extent that they receive their content from the
original publisher, that content is subject to Tasini and would
have permission obtained or content removed prior to being licensed to
the aggregator. An unanswered question is the aggregators' potential liability
for past infringement. While they were not party to the Tasini
it's likely that their past practices would be considered infringing. Will
they be directly liable for those infringing actions, or is their liability
shielded by the contracts with their content suppliers?
What Happens Next?
The biggest questions could boil down to what happens next—both legally
and economically. The Tasini case has been returned to the trial
court in New York, ostensibly to determine the damages for the past infringing
actions. The Supreme Court held that the authors, not the publishers, owned
the copyrights to freelance articles republished in electronic databases.
Past publication of those articles infringed on those rights, requiring
the trial court to determine whether damages are required. As noted above,
the ruling has prompted several publishers to begin removing freelance
writers' content. Their reasoning behind this action is that they no longer
own the copyright to those articles and continued publication would be
An alternative is for the publishers to obtain the rights from the authors
and presumably pay royalties to keep the articles in the databases. This
is what the authors are advocating. The Supreme Court did not mandate one
approach or the other. However, its opinion did suggest—and to some extent
encourage—the parties to "enter into an agreement allowing continued electronic
reproduction of the Authors' works." The court noted that music-licensing
regimes, such as BMI (http://www.bmi.com)
and ASCAP (http://www.ascap.com),
were successful models for the distribution of copyrighted works and the
payment of royalties. While both parties have indicated a willingness to
negotiate such an agreement, the flurry of charges, countercharges, and
lawsuits suggests a solution is not yet at hand.
An impassioned debate also raged over whether electronic database vendors
would "use this as an excuse to raise prices" (quoting from a listserv
message) or whether they would be forced to reduce prices due to reduced
content. The database producers and vendors are entitled to charge what
they consider to be a fair price for their product. The information buyers
are entitled to purchase or not purchase the product, with price and content
being major factors in their decisions. These are less legal issues than
marketing issues. From the legal perspective, the Tasini
requires the database producer to obtain permission and presumably pay
a royalty for the use of freelance articles in electronic databases. This
will inevitably increase the production costs of the database, which will
likely be passed on to the buyer. If the publishers don't include freelance
articles in their databases, this will decrease the content of those databases,
but won't inevitably lead to a decrease in price.
Is Tasini a Good Thing?
The last of the questions was more philosophical than legal: Is Tasini
a good thing? Goodness, like truth and beauty, is in the eye of the beholder.
The case seems to follow a trend—along with the Napster and RosettaBooks
cases—to provide strong copyright protection very close to the creative
level, particularly when information passes to a digital environment.
In the near term, confusion will continueto reign as database vendors
consider the complexity of paying royalties to perhaps thousands of individuals
vs. reducing the content and therefore the value of their products. Authors
will be uncertain as to if and how they can receive compensation for their
works. And librarians will likely see price raises or increasing challenges
in obtaining access to information.
In the long run, however, I would argue that Tasini
is a good
thing for the information community. By enhancing the copyright value of
the original creative product, there's a greater benefit for new creative
output. With more individuals controlling copyrights, there may be increased
flexibility and competitiveness as new models of information dissemination
can be explored. I noted parallels with the recent Random House v. RosettaBooks
lawsuit. The finding in that case—that authors controlled the e-book publishing
rights—opens up access through both large-scale publishers and start-ups
like RosettaBooks, increasing availability and competition. One can hope
that the same positive outcome will be the ultimate resolution of the Tasini
George H. Pike is director of the Barco Law Library and assistant
professor of law at the University of Pittsburgh School of Law. His e-mail
address is firstname.lastname@example.org.