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 decision 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 Code; http://uscode.house.gov/usc.htm) 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 definition.
 

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.
 

Journal Aggregators
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 litigation, 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 infringement.

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 ruling 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 decision.
 
 

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 pike@law.pitt.edu.