Authors Prevail in Suit

October 22, 1999


Michael I. Rudell

Freelance Authors Prevail in Suit Involving Their Contributions to Collective Works

(Originally published in the Entertainment Law column in the New York Law Journal, October 22, 1999.)

A group of freelance authors who write articles for publication in magazines and periodicals have successfully challenged the right of the publishers of those collective works to republish the articles in electronic media. In reversing the decision of the lower court, the U.S. Court of Appeals held that section 201(c) of the Copyright Act, which grants the owner of copyright in a collective work the right to revise that work, does not include the right to republish those contributions in electronic media.

In 1994, Jonathan Tasini, President of the National Writers’ Union, and nine other authors filed suit against The New York Times, Newsday, Time-Warner, Mead Data, University Microfilms and other media companies claiming that the copyright each plaintiff owns in his or her articles was infringed when they were licensed without the authors’ permission to the electronic databases. The plaintiff authors had written original works for first publication by the defendants between 1990 and 1993. The general practice was to negotiate due dates, word counts, subject matter and price. None of the articles was written when the author was employed by the applicable publication, nor was any article written under a work-for-hire agreement. The authors registered a copyright in each of the articles.

Defendant Mead Data Central Corp. owns and operates NEXIS, a massive database that includes the full text of articles appearing in hundreds of newspapers and periodicals. Mead entered into a licensing agreement with each of the publishers under which it was provided much of the content of their periodicals in digital form for inclusion in NEXIS. Subscribers to NEXIS can retrieve articles individually or in groups, such as with others on similar topics. Each article is made available to the subscriber without any material from the rest of the periodical in which it first appeared.

When an issue of a periodical is made available to Mead for inclusion in NEXIS it is stripped electronically into separate files representing individual articles. In the process, much of what appears in the issue of the periodical is not made part of the file transmitted to Mead, including formatting decisions, pictures, maps and tables. Also, certain information relating to the initial page layout is lost, such as whether the article appeared above or below the fold in the case of a newspaper.

Defendant University Microfilms International (“UMI”) markets CD-ROM database products. Under an agreement with The New York Times and Mead, UMI produces and markets the “New York Times on Disc” (“NYTO”) CD-ROM, which contains the full text of articles from The New York Times. It also produces and markets a “General Periodicals On Disc” (“GPO”) CD-ROM, which contains both New York Times articles and thousands of others.

Defendants concede that the authors own the copyright in their individual works. However, they argue that the publishers own the copyright in the collective works they produce and, under section 201(c) of the Copyright Act, may reproduce and distribute the individual works in “any revision of that collective work.”

The Court refers to the crux of the dispute as being whether one or more of the pertinent electronic databases may be considered a “revision” of the individual periodical issues from which the articles were taken. The district court held that making the articles available on the databases did constitute such a revision of the individual periodicals and that the defendants’ licensing arrangements were protected under section 201(c). It granted defendants’ motion for summary judgment and, after a motion for reconsideration was denied, plaintiffs appealed.

In support of their claim, the authors argue (a) that the section 201 privilege that protects the publishers’ initial inclusion of individually copyrighted works in their collective works does not permit their inclusion in one or more of the electronic databases and (b) that the privilege is not a transferable right within the meaning of section 201(d) and thus may not be invoked by the electronic database providers. The district court rejected both arguments, reasoning that the privilege is a “subdivision” of a right that is transferable under said section 201(d)(2) and that the scope of the privilege is broad enough to permit the inclusion of the authors’ articles in the various databases.

Section 201 provides that as to contributions to collective works, the “[c]opyright in each separate contribution is distinct from the copyright in the collective work as a whole, and vests initially in the author of that contribution.” Section 103 of the Act conforms with this provision by stating that the copyright in a compilation or derivative work extends only to the material contributed by the author of that work as distinguished from the preexisting material employed in the work.

The term “compilation” includes collective works, which is defined as “a work such as a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.”

Section 201(c) of the Act provides that “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, and any revision of that collective work, and any later collective work in the same series.”

Because it is undisputed that the electronic databases are neither the original collective work in which the author’s articles were published nor a later collective work in the same series, defendants rely entirely on the argument that each database constitutes a “revision” of the particular collective work in which each author’s individual contribution first appeared.

The Court first analyzes the language of the statute and the three operative clauses of section 201(c) that limit the privilege in question to: (i) the particular collective work, (ii) any revision of the collective work, and (iii) any later collective work in the same series. Under ordinary principles of statutory construction, the second clause must be read in the context of the first and third clauses.

The first clause – “that particular collective work” – refers to a specific edition or issue of a periodical; the second expands the privilege to permit reproduction and distribution of the contribution as part of a “revision of that work,” and the third sets the outer limit or ceiling on that privilege, permitting the reproduction and distribution of the contribution as part of a later collective work in the same series, such as a new edition of a dictionary or encyclopedia.

The Court states that “the most natural reading of the ‘revision’ of ‘ that collective work’” clause is that the section 201(c) privilege protects only later editions of a particular issue of a periodical, such as the final edition of a newspaper. Because later editions are not identical to earlier editions, use of the individual contributions in the later editions might not be protected under the preceding clause.”

Issues of periodicals often are updated by revised editions and anthologies and encyclopedias are altered through the release of new versions, a “later collective work in the same series.” The House Report on the Copyright Act noted that the “revision” clause in section 201(c) was not intended to permit the inclusion of previously published freelance contributions “in a new anthology or an entirely different magazine or other collective work.”

The contention of the publishers that the electronic databases are revised, digital copies of collective works does not conform with basic canons of statutory construction. If the contents of an electronic database merely are revisions of a particular collective work, then the third clause of section 201(c), permitting the reproduction and distribution of an individually copyrighted work as part of a later collective work in the same series, would be superfluous.

Second, the privilege in set forth in Section 201(c) is an exception to the general rule that copyright vests initially in the author of the individual contribution. Reading “revision” as broadly as defendants suggest would cause the exception to swallow the rule. Under the publishers’ theory, the question of whether the electronic database infringes upon an individual author’s article essentially would turn on whether the rest of the articles from the particular edition also could be retrieved individually. However, section 201(c) would not permit a publisher to sell a hard copy of an author’s article directly to the public even if that publisher also offered for individual sale all of the other articles from the particular edition.

The Court also states that defendants’ reading is in considerable tension with the overall statutory framework of the Copyright Act. Section 201(c) was a key innovation of the Copyright Act of 1976. The Copyright Act of 1909 contemplated a single indivisible copyright which some commentators thought could be lost if an author allowed an article to be used in a collective work. The 1976 Act expressly permitted the transfer of less than the entire copyright, in effect replacing the notion of a single copyright with that of exclusive rights under copyright. Were the privilege as broad and transferable as defendants contend, it is not clear that the rights retained by the authors could be considered “exclusive” in any meaningful sense.

In light of the above, there is no feature peculiar to the databases that would cause the Court to view them as “revisions.” NEXIS is a database comprising thousands or millions of individually retrievable articles taken from hundreds or thousands of periodicals. It can hardly be deemed a “revision” of each edition of every periodical that it contains.

Further, NEXIS does almost nothing to preserve the copyrightable aspects of the collective works of the publishers, as distinguished from the preexisting material employed in the work. The aspects of a collective work that make it an original work of authorship are the selection, coordination and arrangement of the preexisting materials. Even if a NEXIS user so desired, he or she would have a hard time recapturing much of the material contributed by the author of a particular collective work, such as a single newspaper edition. In this context, it is significant that neither the publishers nor NEXIS show any intent to compel, or even to permit, an end user to retrieve an individual work solely with other works from the edition it which it ran.

Even though the UMI databases present a slightly more difficult issue than does NEXIS (NYTO contains articles from only one publisher), nevertheless the Court concludes that the licensing of authors’ works to UMI for inclusion these databases also is not within the section 201(c) revision privilege.

In every respect other than its being limited to The New York Times, NYTO is essentially the same as NEXIS. That limitation is not material for the present purposes because, NYTO is at best a new anthology of innumerable editions of The Times and at worst a new anthology of innumerable articles from these editions. Thus, it cannot be said to be a “revision” of any (or all) particular editions or to be a later collective work in the same series. For the same reason, GPO is not protected under the section 201(c) privilege.

The Court emphasizes that the only issue it addresses is whether, in the absence of a transfer of copyright or any rights thereunder, the authors of collective works may re-license individual works in which they own no rights. Because there has been no express transfer of rights in such cases, the decision turns entirely on the default allocation of the rights provided in the Copyright Act. Publishers and authors are free to contract around the statutory framework.

On these grounds, the Court reverses and remands with instructions to enter judgment for plaintiffs. It need not and does not reach any conclusion as to whether the privilege specified under section 201(c) is transferable under Section 201(d).

As noted in the Court’s decision, the New York Times has “updated its policy to require an express transfer of their copyrights.” After the decision, Plaintiff Tasini called upon publishers to negotiate licenses with freelance writers. He noted that the National Writers’ Union has established the “Publications Rights Clearing House,” which digitally can process permission payments. The Authors Guild and The American Society of Journalists and Authors also have established an authors registry, which is a nonprofit system for disbursing reuse fees.

Defendants have not yet indicated whether they will appeal the decision.