FALL 2010
Cyberlaw
Course No.: 9200-710 (& 810)-001
Course ID:  85723 & 85725
Time: M, W 4:45-6:15 p.m.
Room TBD
Professor Jay Dratler, Jr.
Across from Room 231D (IP Alcove)
Home: 330-835-4537
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2008, 2010  Jay Dratler, Jr.  
For permission, see CMI.

New York Times Co. v. Tasini

121 S.Ct. 2381, 150 L.Ed.2d 500, 59 U.S.P.Q.2D (BNA) 1001 (2001)

GINSBURG, J., delivered the opinion of the Court, in which REHNQUIST, C. J., and O'CONNOR, SCALIA, KENNEDY, SOUTER, and THOMAS, JJ., joined.  STEVENS, J., filed a dissenting opinion, in which BREYER, J., joined.  

GINSBURG, J.: [*2384]

This copyright case concerns the rights of freelance authors and a presumptive privilege of their publishers.  The litigation was initiated by six freelance authors and relates to articles they contributed to three print periodicals (two newspapers and one magazine). Under agreements with the periodicals' publishers, but without the freelancers' consent, two computer database companies placed copies of the freelancers' articles—along with all other articles from the periodicals in which the freelancers' work appeared—into three databases.  Whether written by a freelancer or staff member, each article is presented to, and retrievable by, the user in isolation, clear of the context the original print publication presented.

The freelance authors' complaint alleged that their copyrights had been infringed by the inclusion of their articles in the databases.  The publishers, in response, relied on the privilege of reproduction and distribution accorded them by § 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."
17 U.S.C. § 201(c).  Specifically, the publishers maintained that, as copyright owners of collective works, i.e., the original print publications, they had merely exercised "the privilege" § 201(c) accords them to "reproduce and distribute" the author's discretely copyrighted contribution.

In agreement with the Second Circuit, we hold that § 201(c) does not authorize the copying at issue here.  The publishers are not sheltered by § 201(c), we conclude, because the databases reproduce and distribute articles standing alone and not in context, not "as part of that particular [*2385] collective work" to which the author contributed, "as part of . . . any revision" thereof, or "as part of . . . any later collective work in the same series."  Both the print publishers and the electronic publishers, we rule, have infringed the copyrights of the freelance authors.

I

A

[Tasini and the other authors (Authors) had written certain articles for print publications, such as The New York Times, Newsday (another New York daily newspaper), and Sports Illustrated (Articles).  The Authors had retained and registered their individual copyrights in the Articles, and the periodical publishers (Print Publishers) had "registered collective work copyrights in each periodical edition in which an Article originally appeared."  All the Authors had served as independent contractors or "freelancers," and none had given consent to place use his or her Article(s) in electronic databases. Without this consent, the Print Publishers, relying on their collective-work "privilege," had licensed the use of the Articles in electronic databases.

Three types of databases were involved.  The first was the well-known NEXIS on-line database. The two others were CD-ROM products published by University Microfilms International (UMI).  These CD-ROM products were called, respectively, New York Times OnDisc (NYTO) and General Periodicals OnDisc (GPO).

The three types of databases differed both in what other materials (besides the Articles at issue) they contained and in what they omitted from the print versions of the Articles.  The Court described the NEXIS database as "contain[ing] articles from hundreds of journals (newspapers and periodicals) spanning many years."  Similarly, the GPO CD-ROM product contained "articles from approximately 200 publications or sections of publications."  In contrast, the NYTO CD-ROM product, as its name suggested, contained only articles from the New York Times.

The three types of databases also differed in what they omitted or "stripped" from the printed versions of the Articles.  The NEXIS database provided articles in text-only format, with an identifying code unique to each article.  It stripped out pictures, advertisements, and "the original print publication's formatting features such as headline size, page placement (e.g., above or below the fold for newspapers), or location of continuation pages."

For each article retrieved in response to a user's search request, NEXIS did display "the print publication (e.g., The New York Times), date (September 23, 1990), section (Magazine), initial page number (26), headline or title ("Remembering Jane"), and author (Mary Kay Blakely)."  However, each article so displayed appeared "as a separate, isolated ‘story'—without any visible link to the other stories originally published in the same newspaper or magazine edition."

The NYTO CD-ROM product was a similar text-only product.  It, too, tagged each article with an identifying code.  It also provide an index of articles.  However, like the NEXIS database, it provided articles "with identifying information (author, title, etc.), but without original formatting or accompanying images."

The GPO CD-ROM product was different in this respect.  As an image-based product, it contained complete page-by-page images of the New York Times' Sunday Book Review and Magazine.  As the Court described it, "[t]he CD-ROMs show[ed] each article exactly as it appeared on printed pages, complete with photographs, captions, advertisements, and other surrounding materials."  This product also came with an index and abstracts of all articles.

From the user's perspective, the three database products all worked similarly to NEXIS, with which the reader should be familiar.  Each allowed the user to search for articles using various search criteria, such as author, subject, date, publication, headline, key term, words in text, or other criteria. (Unlike NEXIS, the CD-ROM products searched only the index and abstracts, not the full text.)   Each displayed a list of articles matching the search criteria and allowed the user to display the articles, print them, or download them to a disc.  None of the systems displayed or provided links to articles appearing on other pages of the original print publications.(1)]
B

[The district court granted the Publishers summary judgment, holding that the Section 201(c) privilege covered their activities and was transferable to the database publishers.  The Second Circuit reversed, declining to address the issue of the privilege's transferability.  The Court granted certiorari.]

* * * [*2387] * * *

* * * Like the Court of Appeals, we conclude that the § 201(c) privilege does not override the Authors' copyrights, for the Databases do not reproduce and distribute the Articles as part of a collective work privileged by § 201(c).  Accordingly, and again like the Court of Appeals, we find it unnecessary to determine whether the privilege is transferable.
II

Under the Copyright Act, as amended in 1976, "copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression . . . from which they can be perceived, reproduced, or otherwise communicated."  17 U.S.C. § 102(a).  When, as in this case, a freelance author has contributed an article to a "collective work" such as a newspaper or magazine, see § 101 (defining "collective work"), the statute recognizes two distinct copyrighted works: "Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole . . . ."  § 201(c) (emphasis added).  Copyright in the separate contribution "vests initially in the author of the contribution" (here, the freelancer). Ibid. Copyright in the collective work vests in the collective author (here, the newspaper or magazine publisher) and extends only to the creative material contributed by that author, not to "the preexisting material employed in the work," § 103(b).  See also Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 358, 113 L.Ed.2d 358, 111 S.Ct. 1282 (1991) (copyright in "compilation"—a term that includes "collective works," 17 U.S.C. § 101—is limited to the compiler's original "selection, coordination, and arrangement"). [*2388]

Prior to the 1976 revision, as the courts below recognized, authors risked losing their rights when they placed an article in a collective work.  Pre-1976 copyright law recognized a freelance author's copyright in a published article only when the article was printed with a copyright notice in the author's name.  When publishers, exercising their superior bargaining power over authors, declined to print notices in each contributor's name, the author's copyright was put in jeopardy.  See A. Kaminstein, Divisibility of Copyrights, Study No. 11, in Copyright Law Revision Studies Nos. 11-13, prepared for the Senate Committee on the Judiciary, 86th Cong., 2d Sess., p. 18 (1960).  The author did not have the option to assign only the right of publication in the periodical; such a partial assignment was blocked by the doctrine of copyright "indivisibility."  Thus, when a copyright notice appeared only in the publisher's name, the author's work would fall into the public domain, unless the author's copyright, in its entirety, had passed to the publisher.  Such complete transfer might be accomplished by a contract, perhaps one with a provision, not easily enforced, for later retransfer of rights back to the author.  Or, absent a specific contract, a court might find that an author had tacitly transferred the entire copyright to a publisher, in turn deemed to hold the copyright in "trust" for the author's benefit.

In the 1976 revision, Congress acted to "clarify and improve [this] confused and frequently unfair legal situation with respect to rights in contributions."  H. R. Rep. No. 94-1476, p. 122 (1976) (hereinafter H. R. Rep.).(2)  The 1976 Act rejected the doctrine of indivisibility, recasting the copyright as a bundle of discrete "exclusive rights," 17 U.S.C. § 106, each of which "may be transferred . . . and owned [*2389] separately," § 201(d)(2).(3)  Congress also provided, in § 404(a), that "a single notice applicable to the collective work as a whole is sufficient" to protect the rights of freelance contributors. And in § 201(c), Congress codified the discrete domains of "copyright in each separate contribution to a collective work" and "copyright in the collective work as a whole."  Together, § 404(a) and § 201(c) "preserve the author's copyright in a contribution even if the contribution does not bear a separate notice in the author's name, and without requiring any unqualified transfer of rights to the owner of the collective work."  H. R. Rep. 122.

Section 201(c) both describes and circumscribes the "privilege" a publisher acquires regarding an author's contribution to a collective work:
    "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." (Emphasis added.)
A newspaper or magazine publisher is thus privileged to reproduce or distribute an article contributed by a freelance author, absent a contract otherwise providing, only "as part of" any (or all) of three categories of collective works: (a) "that collective work" to which the author contributed her work, (b) "any revision of that collective work," or (c) "any later collective work in the same series."   In accord with Congress' prescription, a "publishing company could reprint a contribution from one issue in a later issue of its magazine, and could reprint an article from a 1980 edition of an encyclopedia in a 1990 revision of it; the publisher could not revise the contribution itself or include it in a new anthology or an entirely different magazine or other collective work."  H. R. Rep. 122-123.

Essentially, § 201(c) adjusts a publisher's copyright in its collective work to accommodate a freelancer's copyright in her contribution.  If there is demand for a freelance article standing alone or in a new collection, the Copyright Act allows the freelancer to benefit from that demand; after authorizing initial publication, the freelancer may also sell the article to others.  Cf. Stewart v. Abend, 495 U.S. 207, 229, 109 L. Ed. 2d 184, 110 S. Ct. 1750 (1990) ("when an author produces a work which later commands a higher price in the market than the original bargain provided, the copyright statute [i.e., the separate renewal term of former 17 U.S.C. § 24] is designed to provide the author the power to negotiate for the realized value of the work"); id. at 230 (noting author's "inalienable termination right" under current 17 U.S.C. § § 203, 302).  It would scarcely "preserve the author's copyright in a contribution" as contemplated by Congress, H. R. Rep. 122, if a newspaper or magazine publisher were permitted to reproduce or distribute copies of the author's contribution in isolation or within new collective works.  See Gordon, Fine-Tuning Tasini: Privileges of Electronic Distribution and Reproduction, 66 Brooklyn L. Rev. 473, 484 (2000).(4) [*2390]

III

In the instant case, the Authors wrote several Articles and gave the Print Publishers permission to publish the Articles in certain newspapers and magazines.  It is undisputed that the Authors hold copyrights and, therefore, exclusive rights in the Articles.(5)  It is clear, moreover, that the Print and Electronic Publishers have exercised at least some rights that § 106 initially assigns exclusively to the Authors: LEXIS/NEXIS' central discs and UMI's CD-ROMs "reproduce . . . copies" of the Articles, § 106(1); UMI, by selling those CD-ROMs, and LEXIS/NEXIS, by selling copies of the Articles through the NEXIS Database, "distribute copies" of the Articles "to the public by sale," § 106(3); and the Print Publishers, through contracts licensing the production of copies in the Databases, "authorize" reproduction and distribution of the Articles, § 106.(6)

Against the Authors' charge of infringement, the Publishers do not here contend the Authors entered into an agreement authorizing reproduction of the Articles in the Databases.  Nor do they assert that the copies in the Databases represent "fair use" of the Authors' Articles.  See 17 U.S.C. § 107 ("fair use of a copyrighted work . . . is not an infringement"; four factors identified among those relevant to fair use determination).  Instead, the Publishers rest entirely on the privilege described in § 201(c).  Each discrete edition of the periodicals in which the Articles appeared is a "collective work," the Publishers agree.  They contend, however, that reproduction and distribution of each Article by the Databases lie within the "privilege of reproducing and distributing the [Articles] as part of . . . [a]revision of that collective work," § 201(c).  The Publishers' encompassing construction of the § 201(c) privilege is unacceptable, we conclude, for it would diminish the Authors' exclusive rights in the Articles.

In determining whether the Articles have been reproduced and distributed "as part of" a "revision" of the collective works in issue, we focus on the Articles as presented to, and perceptible by, the user of the Databases.  See § 102 (copyright protection subsists in original works fixed in any medium "from which they can be perceived, reproduced, or otherwise communicated"); see also § 101 (definitions of "copies" and "fixed") . . . .  In this case, the three Databases present articles to users clear of the context [*2391] provided either by the original periodical editions or by any revision of those editions.  The Databases first prompt users to search the universe of their contents: thousands or millions of files containing individual articles from thousands of collective works (i.e., editions), either in one series (the Times, in NYTO) or in scores of series (the sundry titles in NEXIS and GPO).  When the user conducts a search, each article appears as a separate item within the search result. In NEXIS and NYTO, an article appears to a user without the graphics, formatting, or other articles with which the article was initially published.  In GPO, the article appears with the other materials published on the same page or pages, but without any material published on other pages of the original periodical.  In either circumstance, we cannot see how the Database perceptibly reproduces and distributes the article "as part of " either the original edition or a "revision" of that edition.

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 miniscule 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."  Webster's Third New International Dictionary 1944, 2545 (1976).  The massive whole of the Database is not recognizable as a new version of its every small part.

Alternatively, one could view the Articles in the Databases "as part of" no larger work at all, but simply as individual articles presented individually.  That each article bears marks of its origin in a particular periodical (less vivid marks in NEXIS and NYTO, more vivid marks in GPO) suggests the article was previously part of that periodical.  But the markings do not mean the article is currently reproduced or distributed as part of the periodical.  The Databases' reproduction and distribution of individual Articles—simply as individual Articles—would invade the core of the Authors' exclusive rights under § 106.(7)

The Publishers press an analogy between the Databases, on the one hand, and microfilm and microfiche, on the other.  We find the analogy wanting.  Microforms typically contain continuous photographic reproductions of a periodical in the medium of miniaturized film.  Accordingly, articles appear on the microforms, writ very small, in precisely the position in which the articles appeared in the newspaper.  The Times, for example, printed the beginning of Blakely's "Remembering Jane" Article on page 26 of the Magazine in the September 23, 1990, edition; the microfilm version of the Times reproduces that same Article on film in the very same position, within a film reproduction of the entire Magazine, in turn within a reproduction of the entire September 23, 1990, edition.  True, the microfilm roll contains multiple editions, and the microfilm user can adjust the machine lens to focus only on the Article, to the exclusion of surrounding material.  Nonetheless, the user first encounters the Article in context.  In the Databases, by contrast, the Articles appear disconnected from their original context.  In NEXIS and NYTO, the user sees the "Jane" Article apart even from the remainder of page 26.  In GPO, the user sees the Article [*2392] within the context of page 26, but clear of the context of page 25 or page 27, the rest of the Magazine, or the remainder of the day's newspaper.  In short, unlike microforms, the Databases do not perceptibly reproduce articles as part of the collective work to which the author contributed or as part of any "revision" thereof.(8)

Invoking the concept of "media neutrality," the Publishers urge that the "transfer of a work between media" does not "alter the character of" that work for copyright [**36] purposes.  That is indeed true.  See 17 U.S.C. § 102(a) (copyright protection subsists in original works "fixed in any tangible medium of expression").  But unlike the conversion of newsprint to microfilm, the transfer of articles to the Databases does not represent a mere conversion of intact periodicals (or revisions of periodicals) from one medium to another.  The Databases offer users individual articles, not intact periodicals.  In this case, media neutrality should protect the Authors' rights in the individual Articles to the extent those Articles are now presented individually, outside the collective work context, within the Databases' new media.(9)

For the purpose at hand—determining whether the Authors' copyrights have been infringed—an analogy to an imaginary library may be instructive.(10) Rather than maintaining intact editions of periodicals, the library would contain separate copies of each article.  Perhaps these copies would exactly reproduce the periodical pages from which the articles derive (if the model is GPO); perhaps the copies would contain only typescript characters, but still indicate the original periodical's name and date, as well as the article's headline and page number (if the model is NEXIS or NYTO).  The library would store the folders containing the articles in a file room, indexed based on diverse criteria, and containing articles from vast numbers of editions.  In response to patron requests, an inhumanly speedy librarian would search the room and provide copies of the articles matching patron-specified criteria.

Viewing this strange library, one could not, consistent with ordinary English usage, characterize the articles "as part of" a "revision" of the editions in which the articles first appeared.  In substance, however, the Databases differ from the file room only to the extent they aggregate articles [*2393] in electronic packages (the LEXIS/NEXIS central discs or UMI CD-ROMs), while the file room stores articles in spatially separate files.  The crucial fact is that the Databases, like the hypothetical library, store and retrieve articles separately within a vast domain of diverse texts.  Such a storage and retrieval system effectively overrides the Authors' exclusive right to control the individual reproduction and distribution of each Article, 17 U.S.C. § § 106(1), (3).  Cf. Ryan v. Carl Corp., 23 F. Supp. 2d 1146 (ND Cal. 1998) (holding copy shop in violation of § 201(c)).

The Publishers claim the protection of § 201(c) because users can manipulate the Databases to generate search results consisting entirely of articles from a particular periodical edition.  By this logic, § 201(c) would cover the hypothetical library if, in response to a request, that library's expert staff assembled all of the articles from a particular periodical edition.  However, the fact that a third party can manipulate a database to produce a noninfringing document does not mean the database is not infringing.  Under § 201(c), the question is not whether a user can generate a revision of a collective work from a database, but whether the database itself perceptibly presents the author's contribution as part of a revision of the collective work.  That result is not accomplished by these Databases.

The Publishers finally invoke Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 78 L. Ed. 2d 574, 104 S. Ct. 774 (1984).  That decision, however, does not genuinely aid their argument.  Sony held that the "sale of copying equipment" does not constitute contributory infringement if the equipment is "capable of substantial noninfringing uses."  The Publishers suggest that their Databases could be liable only under a theory of contributory infringement, based on end-user conduct, which the Authors did not plead.  The Electronic Publishers, however, are not merely selling "equipment"; they are selling copies of the Articles.  And, as we have explained, it is the copies themselves, without any manipulation by users, that fall outside the scope of the § 201(c) privilege.
IV

The Publishers warn that a ruling for the Authors will have "devastating" consequences.  The Databases, the Publishers note, provide easy access to complete newspaper texts going back decades.  A ruling for the Authors, the Publishers suggest, will punch gaping holes in the electronic record of history.  The Publishers' concerns are echoed by several historians, see Brief for Ken Burns et al. as Amici Curiae, but discounted by several other historians, see Brief for Ellen Schrecker et al. as Amici Curiae; Brief for Authors' Guild, Jacques Barzun et al. as Amici Curiae.

Notwithstanding the dire predictions from some quarters,
it hardly follows from today's decision that an injunction against the inclusion of these Articles in the Databases (much less all freelance articles in any databases) must issue.  See 17 U.S.C. § 502(a) (court "may" enjoin infringement); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578, n.10, 127 L.Ed.2d 500, 114 S.Ct. 1164 (1994) (goals of copyright law are "not always best served by automatically granting injunctive relief").  The parties (Authors and Publishers) may enter into an agreement allowing continued electronic reproduction of the Authors' works; they, and if necessary the courts and Congress, may draw on numerous models for distributing copyrighted works and remunerating authors for their distribution.  See, e.g., 17 U.S.C. § 118(b); Broadcast Music, Inc. v. Columbia Broadcasting System, Inc., 441 U.S. 1, 4-6, 10-12, 60 L.Ed. d 1, 99 S.Ct. 1551 (1979) (recounting history of blanket music licensing regimes and consent decrees governing [*2394] their operation).(11)  In any event, speculation about future harms is no basis for this Court to shrink authorial rights Congress established in § 201(c).  Agreeing with the Court of Appeals that the Publishers are liable for infringement, we leave remedial issues open for initial airing and decision in the District Court.  
* * *

We conclude that the Electronic Publishers infringed the Authors' copyrights by reproducing and distributing the Articles in a manner not authorized by the Authors and not privileged by § 201(c).  We further conclude that the Print Publishers infringed the Authors' copyrights by authorizing the Electronic Publishers to place the Articles in the Databases and by aiding the Electronic Publishers in that endeavor.  We therefore affirm the judgment of the Court of Appeals.

It is so ordered.

Justice Stevens, with whom Justice Breyer joins, dissenting.

* * * I * * * [*2395] * * *

The 1976 Act's extensive revisions of the copyright law had two principal goals with respect to the rights of freelance authors whose writings appeared as part of larger collective works.  First, as the legislative history of § 201(c) unambiguously reveals, one of its most significant aims was to "preserve the author's copyright in a contribution even if the contribution does not bear a separate notice in the author's name, and without requiring any unqualified transfer of rights to the owner of the collective work."  H. R. Rep. No. 94-1476, p. 122 (1976) (hereinafter H. R. Rep.) (discussing the purpose of § 201(c)).  Indeed, § 404(a) states that "a single notice applicable to the collective work as a whole is sufficient" to protect the author's rights.

The second significant change effected by the 1976 Act clarified the scope of the privilege granted to the publisher of a collective work.  While pre-1976 law had the effect of encouraging an author to transfer her entire copyright to the publisher of a collective work, § 201(c) creates the opposite incentive, stating that, absent some agreement to the contrary, the publisher acquires from the author 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."(12)  Congress intended this limitation on what the author is presumed to give away primarily to keep publishers from "revising the contribution itself or including it in a new anthology or an entirely different magazine or other collective [*2396] work."  H. R. Rep. 122-123.

The majority is surely correct that the 1976 Act's new approach to collective works was an attempt to "‘clarify and improve the . . . confused and frequently unfair legal situation'" that existed under the prior regime. Id. at 122.  It is also undoubtedly true that the drafters of the 1976 Act hoped to "enhance the author's position vis-a-vis the patron."  It does not follow, however, that Congress' efforts to "preserve the author's copyright in a contribution," H. R. Rep. 122, can only be honored by a finding in favor of the respondent authors.

Indeed, the conclusion that the petitioners' actions were lawful is fully consistent with both of Congress' principal goals for collective works in the 1976 Act.  First, neither the publication of the collective works by the Print Publishers, nor their transfer to the Electronic Databases had any impact on the legal status of the copyrights of the respondents' individual contributions.(13)  By virtue of the 1976 Act, respondents remain the owners of the copyright in their individual works.  Moreover, petitioners neither modified respondents' individual contributions nor, as I will show in Part II, published them in a "new anthology or an entirely different magazine or other collective work."  H. R. Rep. 122-123 (emphasis added). * * *

II * * * [*2397] * * *

I agree with petitioners that neither the conversion of the Print Publishers' collective works from printed to electronic form, nor the transmission of those electronic versions of the collective works to the Electronic Databases, nor even the actions of the Electronic Databases once they receive those electronic versions does anything to deprive those electronic versions of their status as mere "revisions" of the original collective works.

* * *

I see no compelling reason why a collection of files corresponding to a single edition of the New York Times, standing alone, cannot constitute a "revision" of that day's New York Times.  It might be argued, as respondents appear to do, that the presentation of each article within its own electronic file makes it impossible to claim that the collection of files as a whole amounts to a "revision."  But the conversion of the text of the overall collective work into separate electronic files should not, by itself, decide the question.  After all, one of the hallmarks of copyright policy, as the majority recognizes, is the principle of media neutrality.  See H. R. Rep. 53.

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 from the different medium being employed.  Similarly, the decision to convert the single collective work newspaper into a collection of individual ASCII files can be explained as little more than a decision that reflects the different nature of the electronic medium.  Just as the paper version of the New York Times is divided into "sections" and "pages" in order to facilitate the reader's navigation and [*2398] manipulation of large batches of newsprint, so too the decision to subdivide the electronic version of that collective work into individual article files facilitates the reader's use of the electronic information.  The bare-bones nature of ASCII text would make trying to wade through a single ASCII file containing the entire content of a single edition of the New York Times an exercise in frustration.(14)

Although the Court does not separately discuss the question whether the groups of files that the New York Times sends to the Electronic Databases constitute "revisions," its reasoning strongly suggests that it would not accept such a characterization.  The majority, for example, places significant emphasis on the differences between the various Electronic Databases and microform, a medium that admittedly qualifies as a revision under § 201(c).  As with the conversion of individual editions into collections of separate article-files, however, many of the differences between the electronic versions and microform are necessitated by the electronic medium.  The Court therefore appears to back away from principles of media neutrality when it implicitly criticizes ASCII-text files for their inability to reproduce "Remembering Jane" "in the very same position, within a film reproduction of the entire Magazine, in turn within a reproduction of the entire September 23, 1990, edition."

In contrast, I think that a proper respect for media neutrality suggests that the New York Times, reproduced as a collection of individual ASCII files, should be treated as a "revision" of the original edition, as long as each article explicitly refers to the original collective work and as long as substantially the rest of the collective work is, at the same time, readily accessible to the reader of the individual file.  In this case, no one disputes that the first pieces of information a user sees when looking at an individual ASCII article file are the name of the publication in which the article appeared, the edition of that publication, and the location of the article within that edition.  I agree with the majority that such labeling alone is insufficient to establish that the individual file exists as "part of" a revision of the original collective work.  But such labeling is not all there is in the group of files sent to the Electronic Databases.

In addition to the labels, the batch of electronic files contains the entire editorial content of the original edition of the New York Times for that day.  That is, while I might agree that a single article, standing alone, even when coded with identifying information (e.g., publication, edition date, headline, etc.), should not be characterized as a "part of" a larger collective work, I would not say the same about an individual article existing as "part of" a collection of articles containing all the editorial content of that day's New York Times.  This is all the more true because, as the District [*2399] Court correctly noted, it is the Print Publishers' selection process, the editorial process by which the staff of the New York Times, for example, decides which articles will be included in "All the News That's Fit to Print," that is the most important creative element they contribute to the collective works they publish.  While such superficial features as page placement and column width are lost in ASCII format, the Print Publishers' all-important editorial selection is wholly preserved in the collection of individual article-files sent to the Electronic Databases.

To see why an electronic version of the New York Times made up of a group of individual ASCII article-files, standing alone, may be considered a § 201(c) revision, suppose that, instead of transmitting to NEXIS the articles making up a particular day's edition, the New York Times saves all of the individual files on a single floppy disk, labels that disk "New York Times, October 31, 2000," and sells copies of the disk to users as the electronic version of that day's New York Times.  The disk reproduces the creative, editorial selection of that edition of the New York Times.  The reader, after all, has at his finger tips substantially all of the relevant content of the October 31 edition of the collective work.  Moreover, each individual article makes explicit reference to that selection by including tags that remind the reader that it is a part of the New York Times for October 31, 2000.  Such a disk might well constitute "that particular collective work"; it would surely qualify as a "revision" of the original collective work.  Yet all the features identified as essential by the majority and by the respondents would still be lacking.  An individual looking at one of the articles contained on the disk would still see none of the original formatting context and would still be unable to flip the page.

Once one accepts the premise that a disk containing all the files from the October 31, 2000, New York Times can constitute a "revision," there is no reason to treat any differently the same set of files, stored in a folder on the hard disk of a computer at the New York Times.  Thus, at least before it is republished by the Electronic Databases, the collection of files that the New York Times transmits to them constitutes a revision, in electronic form, of a particular edition of the New York Times.

III

* * * [*2400] * * *

If my hypothetical October 31, 2000, floppy disk can be a revision, I do not see why the inclusion of other editions and other periodicals is any more significant than the placement of a single edition of the New York Times in a large public library or in a book store.  Each individual file still reminds the reader that he is viewing "part of" a particular collective work.  And the entire editorial content of that work still exists at the reader's fingertips.(15)

It is true that, once the revision of the October 31, 2000, New York Times is surrounded by the additional content, it can be conceptualized as existing as part of an even larger collective work (e.g., the entire NEXIS database).  The question then becomes whether this ability to conceive of a revision of a collective work as existing within a larger "collective work" changes the status of the original revision.  Section 201(c)'s requirement that the article be published only as "part of . . . any revision of that collective work" does not compel any particular answer to that question.  A microfilm of the New York Times for October 31, 2000, does not cease to be a revision of that individual collective work simply because it is stored on the same roll of film as other editions of the Times or on a library shelf containing hundreds of other microfilm periodicals.  Nor does § 201(c) compel the counterintuitive conclusion that the microfilm version of the Times would cease to be a revision simply because its publishers might choose to sell it on rolls of film that contained a year's editions of both the New York Times and the Herald-Tribune.  Similarly, the placement of our hypothetical electronic revision of the October 31, 2000, New York Times within a larger electronic database does nothing to alter either the nature of our original electronic revision or the relationship between that revision and the individual articles that exist as "part of " it.

Finally, the mere fact that an individual user may either view or print copies of individual articles stored on the Electronic Databases does not change the nature of the revisions contained within those databases. The same media-specific necessities that allow the publishers to store and make available the original collective work as a collection of individual digital files make it reasonable for the Electronic Databases to enable the user to download or print only those files in which the user has a particular interest.  But this is no different from microfilm.  Just as nothing intrinsic in the nature of microfilm dictates to a user how much or how little of a microform edition of the New York Times she must copy, nothing intrinsic in the Electronic Databases dictates to a user how much (or how little) of a particular edition of the New York Times to view or print.  It is up to the user in each instance to decide whether to employ the publisher's product in a manner that infringes either the publisher's or the author's copyright.  And to the extent that the user's decision to make a copy of a particular article violates the author's copyright in that article, such infringing third-party behavior should not be attributed to the database.(16)  See Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 434, 78 L. Ed. 2d 574, 104 S. Ct. 774 (1984). [*2401]

IV

* * *

It is likely that the Congress that enacted the 1976 revision of the law of copyright did not anticipate the developments that occurred in the 1980s which gave rise to the practices challenged in this litigation.  See Miller, Copyright Protection for Computer Programs, Databases, and Computer Generated Works: Is Anything New Since CONTU?, 106 Harv. L. Rev. 977, 979 (1993) (in 1976, "Congress . . . decided to avoid grappling with technological issues that obviously required more study than the legislative process was then willing to give them").(17) Thus, in resolving ambiguities in the relevant text of the statute, we should be mindful of the policies underlying copyright law.  

Macaulay wrote that copyright is "a tax on readers for the purpose of giving a bounty to writers."  T. Macaulay, Speeches on Copyright 11 (A. Thorndike ed. 1915)  That tax restricts the dissemination of writings, but only insofar as necessary to encourage their production, the bounty's basic objective.  See U.S. Const., Art. I, § 8, cl. 8. * * * The majority's decision today unnecessarily subverts this fundamental goal of copyright law in favor of a narrow focus on "authorial rights."  Although the desire to protect such rights is certainly a laudable sentiment,(18) copyright law demands that "private motivation must ultimately serve the cause of promoting broad public availability of literature, music, and the other arts."  Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 45 L. Ed. 2d 84, 95 S. Ct. 2040 (1975) (emphasis added).

The majority discounts the effect its decision will have on the availability of comprehensive digital databases, but I am not as confident.  As petitioners' amici have persuasively argued, the difficulties of locating individual freelance authors and the potential of exposure to statutory damages may well have the effect of forcing electronic archives to purge freelance pieces from their databases.(19)  "The omission of these [*2402] materials from electronic collections, for any reason on a large scale or even an occasional basis, undermines the principal benefits that electronic archives offer historians—efficiency, accuracy and comprehensiveness."  Brief for Ken Burns et al. as Amici Curiae 13.

Moreover, it is far from clear that my position even deprives authors of much of anything (with the exception of perhaps the retrospective statutory damages that may well result from their victory today).(20)  Imagine, for example, that one of the contributions at issue in this case were a copyrighted version of John Keats' Ode on a Grecian Urn, published on page 29 of our hypothetical October 31, 2000, New York Times.  Even under my reading of § 201(c), Keats retains valuable copyright protection.  No matter how well received his ode might be, it is unlikely—although admittedly possible—that it could be marketed as a stand-alone work of art.  The ode, however, would be an obvious candidate for inclusion in an anthology of works by romantic poets, in a collection of poems by the same author, or even in a 400-page novel quoting a poem in passing.  The author's copyright would protect his right to compensation for any such use. . . .  Moreover, the value of the ode surely would be enhanced, not decreased, by the accessibility and readership of the October 31, 2000, edition of the New York Times.  The ready availability of that edition, both at the time of its first publication and subsequently in libraries and electronic databases, would be a benefit, not an injury, to most authors.  Keats would benefit from the poem's continued availability to database users, by his identification as the author of the piece, and by the database's indication of the fact that the poem first appeared in a prestigious periodical on a certain date.  He would not care one whit whether the database indicated the formatting context of the page on which the poem appeared.  What is overwhelmingly clear is that maximizing the readership of the ode would enhance the value of his remaining copyright uses.

Nor is it clear that Keats will gain any prospective benefits from a victory in this case.  As counsel for petitioners represented at oral argument, since 1995, the New York Times has required freelance authors to grant the Times "electronic rights" to articles.  And the inclusion of such a term has had no effect on the compensation authors receive. * * *

Users . . . do not go to NEXIS because it contains a score of individual articles by Jonathan Tasini.(21)  Rather, they go to NEXIS because it contains a comprehensive and easily searchable collection of (intact) periodicals. * * *

Because it is likely that Congress did not consider the question raised by this case when drafting § 201(c), because I think the District Court's reading of that provision is reasonable and consistent with the statute's purposes, and because the principal goals of copyright policy are better served by that reading, I would reverse the judgment of the Court of Appeals.  The majority is correct that we cannot know in advance the effects of today's decision on the comprehensiveness of electronic databases.  We can be fairly certain, however, that it will provide little, if any, benefit to either authors or readers.

Back to Top


Footnotes




1.   [Court's footnote 2]  For example, the GPO user who retrieves Blakely's "Remembering Jane" article will see the entirety of Magazine page 26, where the article begins, and Magazine page 78, where the article continues and ends.  The NYTO user who retrieves Blakely's article will see only the text of the article and its identifying information (author, headline, publication, page number, etc.).  Neither the GPO retrieval nor the NYTO retrieval produces any text on page 27, page 79, or any other page.  The user who wishes to see other pages may not simply "flip" to them. She must conduct a new search.

Back to Text

2.   [Court's footnote 3]  Two Registers of Copyrights have observed that the 1976 revision of the Copyright Act represented "a break with the two-hundred-year-old tradition that has identified copyright more closely with the publisher than with the author."  Letter from M. Peters to Rep. McGovern, reprinted in 147 Cong. Rec. E182 (Feb. 14, 2001) (hereinafter Peters Letter) (quoting Ringer, First Thoughts on the Copyright Act of 1976, 22 N. Y. L. S. L. Rev. 477, 490 (1977)).  The intent to enhance the author's position vis-a-vis the patron is also evident in the 1976 Act's work-for-hire provisions.  See Community for Creative Non-Violence v. Reid, 490 U.S. 730, 742-750, 104 L. Ed. 2d 811, 109 S. Ct. 2166 (1989); see also 17 U.S.C. § 203(a)(5) (inalienable authorial right to revoke a copyright transfer).  Congress' adjustment of the author/publisher balance is a permissible expression of the "economic philosophy behind the [Copyright Clause]," i.e., "the conviction that encouragement of individual effort [motivated] by personal gain is the best way to advance public welfare."  Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 558, 85 L. Ed. 2d 588, 105 S. Ct. 2218 (1985) (quoting Mazer v. Stein, 347 U.S. 201, 219, 98 L. Ed. 630, 74 S. Ct. 460 (1954)).

Back to Text

3.   [Court's footnote 5]  It bears repetition here, that we neither decide nor express any view on whether the § 201(c) "privilege" may be transferred.


Back to Text

4.   [Court's footnote 6]  The dissenting opinion suggests that a ruling for the Publishers today would maintain, even enhance, authors' "valuable copyright protection."   We are not so certain.  When the reader of an article in a periodical wishes to obtain other works by the article's author, the Databases enable that reader simply to print out the author's articles, without buying a "new anthology . . . or other collective work,"  H. R. Rep. 122-123.  In years past, books compiling stories by journalists such as Janet Flanner and Ernie Pyle might have sold less well had the individual articles been freely and permanently available on line.  In the present, print collections of reviews, commentaries, and reportage may prove less popular because of the Databases.  The Register of Copyrights reports that "freelance authors have experienced significant economic loss" due to a "digital revolution that has given publishers [new]opportunities to exploit authors' works."

More to the point, even if the dissent is correct that some authors, in the long-run, are helped, not hurt, by Database reproductions, the fact remains that the Authors who brought the case now before us have asserted their rights under § 201(c).  We may not invoke our conception of their interests to diminish those rights.

Back to Text

5.   [Court's footnote 7]  The Publishers do not claim that the Articles are "works made for hire."  17 U.S.C. § 201(b).  As to such works, the employer or person for whom a work was prepared is treated as the author.  The Print Publishers, however, neither engaged the Authors to write the Articles as "employees" nor "commissioned" the Articles through "a written instrument signed by [both parties]" indicating that the Articles shall be considered "works made for hire."  § 101 (defining "work made for hire").


Back to Text

6.   [Court's footnote ]  Satisfied that the Publishers exercised rights § 106 initially assigns exclusively to the Author, we need resolve no more on that score.  Thus, we do not reach an issue the Register of Copyrights has argued vigorously.  The Register maintains that the Databases publicly "display" the Articles, § 106(5); because § 201(c) does not privilege "display," the Register urges, the § 201(c) privilege does not shield the Databases.


Back to Text

7.   [Court's footnote 9]  The dissenting opinion takes as its starting point "what is sent from the New York Times to the Electronic Databases."   This case, however, is not ultimately about what is sent between Publishers in an intermediate step of Database production; it is about what is presented to the general public in the Databases.  Those Databases simply cannot bear characterization as a "revision" of any one periodical edition.  We would reach the same conclusion if the Times sent intact newspapers to the Electronic Publishers.


Back to Text

8.   [Court's footnote 10]  The Court of Appeals concluded NEXIS was infringing partly because that Database did "almost nothing to preserve the copyrightable aspects of the [Print] Publishers' collective works," i.e., their original "selection, coordination, and arrangement."  206 F.3d 161, 168 (2d Cir. 1999).  We do not pass on this issue.  It suffices to hold that the Databases do not contain "revisions" of the Print Publishers' works "as part of" which the Articles are reproduced and distributed.


Back to Text

9.   [Court's footnote 11]  The dissenting opinion apparently concludes that, under the banner of "media-neutrality," a copy of a collective work, even when considerably changed, must constitute a "revision" of that collective work so long as the changes were "necessitated by . . . the medium."  We lack the dissent's confidence that the current form of the Databases is entirely attributable to the nature of the electronic media, rather than the nature of the economic market served by the Databases.  In any case, we see no grounding in § 201(c) for a "medium-driven" necessity defense, to the Authors' infringement claims.  Furthermore, it bears reminder here and throughout that these Publishers and all others can protect their interests by private contractual arrangement.


Back to Text

10.   [ Court's footnote 12]  The Publishers have frequently referred to their products as "electronic libraries."  We need not decide whether the Databases come within the legal coverage of the term "libraries" as used in the Copyright Act.  For even if the Databases are "libraries," the Copyright Act's special authorizations for libraries do not cover the Databases' reproductions.  See, e.g., 17 U.S.C. § 108(a)(1) (reproduction authorized "without any purpose of direct or indirect commercial advantage"); § 108(b)(reproduction authorized "solely for purposes of preservation and security or for deposit for research use"); § 108(c) (reproduction "solely for the purpose of replacement of a copy or phonorecord that is damaged, deteriorating, lost, or stolen, or if the existing format in which the work is stored has become obsolete").


Back to Text

11.   [Court's footnote 13]  Courts in other nations, applying their domestic copyright laws, have also concluded that Internet or CD-ROM reproduction and distribution of freelancers' works violate the copyrights of freelancers.  See, e.g., Union Syndicale des Journalistes Franais v. SDV Plurimdia (T.G.I., Strasbourg, Fr., Feb. 3, 1998), in Lodging of International Federation of Journalists (IFJ) as Amicus Curiae; S. C. R. L. Central Station v. Association Generale des Journalistes Professionnels de Belgique (CA, Brussels, Belg., 9e ch., Oct. 28, 1997), transl. and ed. in 22 Colum.-VLA J. L. & Arts 195 (1998); Heg v. De Volskrant B. V. (Dist. Ct., Amsterdam, Neth., Sept. 24, 1997), transl. and ed. in 22 Colum.-VLA J. L. & Arts, at 181.  After the French Plurimdia decision, the journalists' union and the newspaper-defendant entered into an agreement compensating authors for the continued electronic reproduction of their works. See FR3 v. Syndicats de Journalistes (CA, Colmar, Sept. 15, 1998), in Lodging of IFJ as Amicus Curiae.  In Norway, it has been reported, a similar agreement was reached.  See Brief for IFJ as Amicus Curiae 18.


Back to Text

12.   [Justice Stevens' footnote 4]  Respondents Garson and Robbins argue that the § 201(c) privilege is completely nontransferable.  The District Court properly rejected this argument, which, in my view, is supported by neither the text nor the legislative history of § 201(c).  Publishers obviously cannot assign their publication privilege to another publisher such that the author's work appears in a wholly different collective work, but nothing in § 201(c) clearly prohibits a publisher from merely farming out the mundane task of printing or distributing its collective work or its revision of that collective work.  Because neither the majority nor the Court of Appeals has reached this issue, however, I will not address it further.


Back to Text

13.   [Justice Stevens' footnote 6]  Nor is the majority correct that, even if respondents retained copyright in their individual articles, the conclusion that petitioners could republish their collective works on the Electronic Databases would drain that copyright of value.  Even on my view of this case, respondents retain substantial rights over their articles.  Only the respondents, for example, could authorize the publication of their articles in different periodicals or in new topical anthologies wholly apart from the context of the original collective works in which their articles appeared.


Back to Text

14.   [Justice Stevens' footnote 9]  An ASCII version of the October 31, 2000, New York Times, which contains 287 articles, would fill over 500 printed pages.  Conversely, in the case of graphical products like GPO, the demands that memory-intensive graphics files can place on underpowered computers make it appropriate for electronic publishers to divide the larger collective work into manageably sized subfiles.  The individual article is the logical unit.  The GPO version of the April 7, 1996, New York Times Magazine, for example, would demand in the neighborhood of 200 megabytes of memory if stored as a single file, whereas individual article files range from 4 to 22 megabytes, depending on the length of the article.


Back to Text

15.   [Justice Stevens' footnote 13]  In NEXIS, for example, the reader can gather all the content of the October 31, 2000, New York Times by conducting the following simple search in the correct "library": "date(is 10/31/2000)."


Back to Text

16.   [Justice Stevens' footnote 14]  The majority finds that NEXIS infringes by "copying" and "distributing" copies of respondents' articles to the public.  Perhaps it would be more accurate to say that NEXIS makes it possible for users to make and distribute copies.  In any event, the Court has wisely declined to reach the question whether the Electronic Databases publicly "display" the articles within the meaning of § 106.


Back to Text

17.   [Justice Stevens' footnote 15]  See also H. R. Rep. 116.  In the quarter century since the 1976 Act became law, "the databases [in existence] have grown by a factor of 39 . . . .  In 1975, the 301 databases in existence contained about 52 million records.  The 11,681 databases in 1999 contained nearly 12.86 billion records for a growth by a factor of 242."  Williams, Highlights of the Online Database Industry and the Internet: 2000, in Proceedings of the 21st Annual National Online Meeting 1 (Williams ed., 2000).


Back to Text

18.   [Justice Stevens' footnote 16]  But see Breyer, The Uneasy Case for Copyright: A Study of Copyright in Books, Photocopies, and Computer Programs, 84 Harv. L. Rev. 281, 286-290 (1970) (criticizing the use of copyright as a means of protecting authorial rights).


Back to Text

19.   [Justice Stevens' footnote 17]  Indeed, today's decision in favor of authors may have the perverse consequence of encouraging publishers to demand from freelancers a complete transfer of copyright.  If that turns out to be the case, we will have come full circle back to the pre-1976 situation.


Back to Text

20.   [Justice Stevens' footnote 19]  It is important to remember that the prospect of payment by the Print Publishers was sufficient to stimulate each petitioner to create his or her part of the collective works, presumably with full awareness of its intended inclusion in the Electronic Databases.


Back to Text

21.   [Justice Stevens' footnote 20]  Even assuming, as the majority does, that the existence of databases like NEXIS may have some adverse effect on the market for stand-alone compilations of authors' contributions to collective works, I fail to see how, on that basis, electronic databases are any different from microform.  With respect to effects on the market for stand-alone works, the only difference between the two products is the speed with which digital technology allows NEXIS users to retrieve the desired data.  But the 1976 Act was not intended to bar the use of every conceivable innovation in technology that might give publishers new opportunities to exploit authors' works.

Copyright law is not an insurance policy for authors, but a carefully struck balance between the need to create incentives for authorship and the interests of society in the broad accessibility of ideas. * * * The majority's focus on authorial incentive comes at the expense of the equally important (at least from the perspective of copyright policy) public interest.

* * *

Back to Text

Back to Top