New Jersey Law Journal,
November 20, 2000
Copyright 2000 American Lawyer Newspapers Group, Inc.
New Jersey Law Journal
November 20, 2000
HEADLINE: Electronic publications may no longer be just an addendum
to print publications. The Supreme Court may rule that copyrights to
works published electronically are separate from copyrights in the traditional
publication of the same work. Internet Law High Court's Review Shows
Internet Rights May Be Unique Electronic publications may no longer
be just an addendum to print publications
BYLINE: JONATHAN BICK
THE AUTHOR IS AN ADJUNCT PROFESSOR OF LAW AT RUTGERS LAW SCHOOL AND
PACE LAW SCHOOL. HE IS THE AUTHOR OF 101 THINGS YOU NEED TO KNOW ABOUT
INTERNET LAW (RANDOM HOUSE 12/00).
The Supreme Court's agreement to review Tasini v. New York Times, 206
F.3d 161 (2d Cir. 1999), is more evidence that Internet law is mainstream
law. For the most part, electronic publication has been considered an
inconsequential addendum to print publication. The Supreme Court has
the opportunity to put electronic publication and traditional publication
on an equal footing.
In the past, a publisher who transferred the contents of its publication
into an electronic form has been accorded copyright privileges tantamount
to a revision of the publication. Under copyright law, regarding articles
submitted by free-lance authors, that means that a publisher has the
same rights in the electronic form of an article as it has in the traditional
form of the article.
The copyright relationship between the author, for his or her work,
and a publisher, for a publication that is composed of work from a number
of different contributors, is addressed by the Contributions to Collective
Works provision of the Copyright Act of 1976. When a free-lance writer
contributes a story to a publication, the copyright in the contributed
article rests initially with the author, while the publisher acquires
copyright in the collective work in its entirety.
The plaintiff authors in Tasini argued that the defendant publisher
had exceeded the scope of the rights allowed by the Copyright Act when
the publisher used the authors' works in a collective work not traditionally
Courts regularly have found electronic publishing to be closely associated
with traditional publishing. Thus, when a free-lance author transferred
his or her work to a publisher without a written contract, the author
transferred to the publisher a whole set of rights. Electronic rights
were simply a part of the traditional rights.
It followed that when a publisher transferred the contents of its publication
into an electronic form, this amounted to a revision of the publication
under copyright law. In the end, the publisher has the same rights to
a revision of the work as it has to the work originally contributed
by free-lance authors. Hence, when a publisher sells its electronic
revised publication to a third party, it is within its rights under
the law since the publisher was granted exclusive rights, which are
transferable, by the free- lance author.
The decision on appeal deals with the fundamental question of what rights
a free-lance author transfers when no written contract is involved.
The Supreme Court may find that the Internet is a separate publication
channel and that the publishers' rights to make revisions to its publication
does not permit it to license the free-lance writers' individual articles
for inclusion in electronic databases.
Such a decision would have significant consequences for publishers and
writers. Since 1991, when the suit was filed, a battle over electronic
publishing rights in the authors' works has raged. As the Internet became
more mainstream, publishers and authors have sought to exploit it. Publishers
now demand new written contracts in which the writer surrenders both
traditional and electronic rights to his or her work. Writers insist
on royalties for electronic publishing.
The Supreme Court may separate the copyrights for traditional and electronic
publication of the same content. Legally, the chief difficulty associated
with such a finding is the fact that it runs contrary to the aim of
the Copyright Act itself.
The primary aim of copyright law is to ensure public access to intellectual
property. The copyright protection gives authors an incentive to give
the public access to their work.
The Copyright Act of 1976 gives copyright protection to authors who
"fixed" their work in a tangible medium. Traditionally, the
medium used has been paper. More recently, the medium has been an electronic
file. The copyright springs into existence and makes an author's product
his property as soon as the work is "fixed." If the author
is employed to create the work, however, once the work is fixed, the
owner is the author's employer.
The Copyright Act of 1976 recognized that authors had several different
rights to a single work. This change was due in part to recognition
of a change in information-communication channels. Thus, from a single
writing, an author could assign the exclusive rights to publish a book
to one party and the exclusive movie rights from the same book to another
Section 201(d) of the Copyright Act identifies five exclusive rights
that may be subdivided and owned separately. It also indicates that
the ownership of a copyright may be transferred in whole or in part,
by any means of conveyance or by operation of law. In addition, ownership
may be bequeathed by will and may pass as personal property by applicable
The rights of publishers of collective works, such as newspapers, were
also clarified in the 1976 act. The act stated that a work's rights
remained with the author unless there was a written agreement between
the author and the publisher transferring copyright. In the case of
a free-lance author contributing a work to a publisher of a collective
work, the author must affirmatively grant some license to the publisher
or the publisher will be guilty of infringement.
In the absence of a written agreement between the author and the publisher,
a court may be called on to determine the author's copyright grant to
the publisher, including both traditional and electronic rights. As
times change so do the interpretations of intents. The Supreme Court
must now consider if authors typically intend to integrate or separate
traditional and electronic copyright rights.
Absent an express transfer of the copyright, the publisher 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. In other words, the publisher only
has copyright to the collective work. Thus, ' 201(c) of the act makes
it clear that there is a limitation on the transfer of rights.
Tasini presents a number of issues. The two most important are (1) does
the transfer from a traditional form to an electronic form amount to
a "revision" of the work; and (2) does the publisher have
the right to transfer revised works.
Simply put, the plaintiff authors' claim that they did not expressly
transfer a right to the publisher to use their work for any use other
than a traditional form. The publisher defendant claims that changing
the form of the submitted work was merely a revision of an acquired
It is now up to the Supreme Court to consider whether the transfer from
traditional form to electronic form can still reasonably be called a
revision. It may have been the case in 1976, but is not likely to be
considered so today.
Even the District Court decision in this case was narrow. The court
did not hold that ' 201(c) authorizes the electronic publication of
free-lance authors' work, but only addressed the issue of database archiving
of previously published collective works.
The District Court's narrow decision is likely to be the path the Supreme
Court will take in interpreting the 1976 act. The Court correctly decided
that the transformation of a collective work from paper to electronic
data, in and of itself, does not infringe the copyright in free-lancer's
contributions. It is likely that the Supreme Court will use this opportunity
to put electronic publication and traditional publication on an equal
footing, saying that separate copyright rights exist for each form.