New York Times v. Tasini: The U.S. Supreme Court Affirms "Authorial" Right in Copyright
CRS Report for Congress
Received through the CRS Web
New York Times Co. v. Tasini:
The U.S. Supreme Court Affirms
“Authorial” Rights in Copyright
Robin Jeweler
Legislative Attorney
American Law Division
Summary
This report examines the U.S. Supreme Court’s opinion in New York Times Co. v.
Tasini. This case considers whether, under the U.S. Copyright Act, 17 U.S.C. § 201(c),
publishers are “privileged” to include the copyrighted articles of freelance authors in an
electronic database. The authors contended that the copyright interest they conveyed to
the publishers for original publication of their articles did not permit their subsequent
reproduction and distribution in electronic databases. The Print and Electronic
Publishers argued that the databases were a permissible “revision” of the original
periodicals. Interpreting the Copyright Act to emphasize the primacy of authorial rights,
the Court found for the freelance authors. The Court’s analysis is discussed below.
On June 25, 2001, in New York Times v. Tasini Co.,1 the U.S. Supreme Court held
that newspapers and magazines that publish articles written by freelance authors do not
automatically have the right to include those articles in electronic databases.
Background. Jonathan Tasini and five freelance writers brought suit against the
New York Times, Newsday and Time, Inc. (Print Publishers) for copyright infringement
as a consequence of the inclusion of their articles in electronic databases. The Print
Publishers licensed rights to print and sell articles to LEXIS/NEXIS and University
Microfilms International (UMI)(Electronic Publishers), who placed the articles in the
electronic databases: LEXIS, the New York Times OnDisc (NYTO), and General
Periodicals OnDisc (GPO). UMI issued CD-ROM products. NYTO is a text-only
database containing Times articles presented in the same manner as they are displayed in
LEXIS/NEXIS; GPO is an image-based system that reproduces the Time’s Sunday Book
Review and Magazine as they appear in the print editions, complete with photographs,
captions, advertisements, and other surrounding material. In both NYTO and GPO, as in
LEXIS/NEXIS, the articles retrieved by users appear individually, without links to the
original publication.
1 2001 U.S. LEXIS 4667.
Congressional Research Service ˜ The Library of Congress
The writers brought suit in a U.S. district court alleging copyright infringement by
both the Print Publishers and the Electronic Publishers. Plaintiffs sought declaratory and
injunctive relief and damages. As a defense, the publishers asserted the privilege to include
a copyrighted work in a revision of a collective work. The privilege is accorded
publishers under 17 U.S.C. § 201(c) of the Copyright Act which provides:
Copyright in each separate contribution to a collective work is distinct from copyright
in the collective work as a whole, and vests initially in the author of the contribution.
In 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 issued a summary judgment in favor of the publishers, holding that the
databases were “part of . . .[a] revision of that collective work.” The Second Circuit
Court of Appeals reversed, holding that the databases were not among the collective
works covered by § 201(c), and specifically were not revisions of the periodicals in which
the articles were originally published.
The Court’s Decision. In a 7-2 decision prepared by Justice Ginsburg, the Court
examined the legislative history of the authorial rights of freelance writers and explained
why the electronic databases are not, in the Court’s view, “revisions” of the original
collective works.
Prior to enactment of the current copyright law in 1976, a freelance author’s
contribution to a collective work was preserved only if the article was published with a
copyright notice in the author’s name. Since this was rarely done – or because the notice
appeared only in the publishers name – a freelance author’s contribution to a collective
work could easily fall into the public domain. Thus, even though a freelance writer could
theoretically retain a copyright interest in a contribution to a collective work, the right was
easily relinquished or unenforceable.
In the 1976 Copyright Act, Congress acted to remedy this perceived inequity. The
law specifies that a single notice applicable to a collective work as a whole is sufficient to
protect the rights of freelance authors.2 Further, it expressly provides that an exclusive3
right, including a subdivision of any right, may be transferred and owned separately. And,
the provision of § 201(c), quoted above, expressly provides that the copyright in a
contribution to a collective work is distinct from the rights in the work as a whole. It
describes and limits the “privilege” a publisher acquires regarding an author’s contribution
to a collective work. This adjustment in rights between the freelance author and the
publisher, the Court explained, is designed to accommodate a freelancer’s copyright in her
contribution. After authorizing the initial publication, the freelance author may resell the
article to others. Because the 1976 Copyright Act clearly demonstrates congressional
intent to protect the divisible but retained copyright interest of the freelancer in an article
2 17 U.S.C. § 404(a).
3 17 U.S.C. § 201(d)(2).
that is initially published as part of a collective work, the Court was not willing to interpret
§ 201(c) in a manner that it believed would diminish the authors’ exclusive rights.
The Court acknowledged that there were no factual disputes regarding ownership of
the freelancers’ copyright interests. The sole question before it was whether the
transmission by the Print Publishers to the Electronic Publishers, and their commercial use
of the material, was encompassed by the § 201(c) privilege of revision.
To determine whether the articles were reproduced and distributed as part of a
revision of the collective works, the Court focused on “the Articles as presented to, and
perceptible by, the user of the Databases.”4 It lent great weight to the fact that when the
user conducts a search, the electronic databases produce each article as a separate item.
Despite the fact that the article notes its placement, page number, etc. in the publication,
it is displayed with minimal connection to the original publication.5 Indeed, the Court
refused to view the vast scope of collected articles within each electronic database as in
any way constituting a “revision” of the original newspaper or magazine from which the
article was extracted:
One might view the articles as parts of a new compendium – namely, the entirety
of works in the Database. In that compendium, each edition of each periodical
represents only a minuscule fraction of the ever-expanding Database. The Database no
more constitutes a “revision” of each constituent edition than a 400-page novel quoting
a sonnet in passing would represent a “revision” of that poem. “Revision” denotes a
new “version,” and a version is, in this setting, a “distinct form of something regarded
by its creators or others as one work.”... The massive whole of the Database is not
recognizable as a new version of its every small part.6
The publishers argued that the databases were comparable to the permitted
collections of periodicals maintained on microfiche or microfilm. But the Court rejected
the analogy, distinguishing microforms because each article appears in context. Although
a user can extract an individual article, she must manipulate the microform much as she
may have used the original. That is, if an article appears on page A2 and is continued on
page A12, the reader must view reproductions of those pages on the film. The databases,
in contrast, offer users individual articles, not intact periodicals.
The fact that a user can manipulate the database to generate search results consisting
only of articles from a particular periodical edition did not sway the Court. Because a
database can be used in a noninfringing manner does not immunize it from other infringing
activity.
4 Slip opinion at 14.
5 The right to “display” a work publicly is one of the author’s discrete rights in 17 U.S.C. § 106(5).
The Register of Copyright suggested that the authors’ display right was implicated in the litigation
and therefore, the publishers’ privilege of reproduction and distribution under § 201(c) need not
be the legal fulcrum for resolving the issue. 147 CONG. REC. E182-3 (daily ed. Feb. 14, 2001).
The Court did not reach this contention, which was not argued by the parties to the case.
6 Slip opinion at 15. (Citation omitted.)
The Dissent. The dissenting opinion, written by Justice Stevens and concurred in
by Justice Breyers, expressed a far broader view of a possible “revision” of a collective
work – one that would encompass the material on the electronic databases. In their view,
the stand-alone aspect of the databases’ document retrieval coupled with information
identifying its context in the original publication is sufficient to support the publishers’
revision privilege.
They based their conclusion on several principles. They felt that the argument of the
publishers invoking the concept of “media neutrality,” the principle that the transfer of a
work between media does not alter its character for copyright purposes, was persuasive:
No one doubts that the New York Times has the right to reprint its issues in Braille,
in a foreign language, or in microform, even though such revisions might look and feel
quite different from the original. Such differences, however, would largely result from7
the different medium being employed.
The minority viewed the stand-alone feature of articles in electronic databases as an
integral feature of the medium employed, computer generated ASCII text files. They were
not satisfied with the majority’s distinction between permissible microfilm collections and
electronic databases.
Nor do they believe that the majority adequately balances authorial copyright
interests against the public’s interest in broad availability of literature, music, and other
arts. The paramount copyright goal created by the explicit reservation of the freelancer’s
copyright in a contribution to a collection is to ensure his or her ability to exploit its value
in additional media venues: for example, by republication in a new collection such as the
author’s collected essays or from resale to different publications. They concluded that
finding copyright infringement in the case before them is not likely to enhance the
copyright value of the freelance author’s relationship to the original publisher in a
meaningful or permanent way.
First, according to the publishers, since 1995, the New York Times has required
freelance authors to grant complete “electronic rights” in addition to print rights. But
this has not had a discernible impact on the freelancers’ compensation. Second, the
dissenters presume that the vast majority of database users seek comprehensive and easily
searchable collections of periodicals, not the individual writings of freelance authors.
Therefore, they conclude that the Court’s holding does not increase the value of the
authorial right in a pragmatic way – other than their right to retrospective statutory
damages for copyright infringement.
Impact of the Court’s Decision. Great concern was expressed in many quarters
– including many publishers, historians, and scholars – over the consequences of a holding
for the freelance authors. The publishers contend that either a judicial injunctive remedy
ordering the excision of the infringing articles from the databases, or their voluntarily
removal by the publishers themselves in order to mitigate damages for infringement, would
leave a great information void in the historic record encompassed by the databases. The
Court, however, viewed excision of the infringing material from electronic databases as
7 Slip opinion at 8.
unnecessary and undesirable. It suggested alternative scenarios such as negotiated
agreements between the authors and the publishers to authorize continued electronic
reproduction of the infringing articles, or blanket licensing arrangements patterned after
those utilized by the music industry. Regardless of the consequences, however, the Court
would not subordinate its view of the scope and implementation of authorial rights under
the Copyright Act to speculation about future harm. Or, as expressed by the Register of
Copyright, the Tasini case should be about authorial rights and the compensation of
authors, not the preservation of electronic databases.
The dissent expresses greater concern than the majority over the impact on the
public, which, it believes, stands to lose many of the principal benefits from access to
comprehensive electronic archives, with little, if any, benefit to either authors or readers.