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).

BODY:
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 envisioned.

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 party.

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 laws.

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 work.

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.