By Dr. Gary L. Deel, Ph.D., J.D.
Associate Professor, Dr. Wallace E. Boston School of Business
I’ve written recently about challenges in copyright disputes in movies with famous cases such as Nichols v. Universal Pictures and De Havilland v. Warner Brothers. But copyright issues in print works can be just as complicated.
Copyright Protections Are Effective As Soon As an Artistic Work Is Created
Copyrights are automatically effective at the time a new work is created. So unlike patents, trademarks and certain other types of intellectual property, there is no affirmative registration required for copyrights.
To be clear, creators can register their work with the U.S. Copyright Office if they want a documented record of ownership. But strictly speaking, this registration is not necessary for copyright protections.
When an author pens a new work, for example, the author’s copyrights attach to the creative work at the very moment the article is written. No additional action on the author’s part is required.
But this situation raises an interesting question: What happens if authors want to sell the use of an article to a publication such as a newspaper or magazine? Must they surrender the copyright and transfer ownership of the work in its entirety? To answer these questions, it’s necessary take a brief look at the history of copyright laws during the 20th century.
The History of 20th-Century Copyright Laws
The 1909 Copyright Act was one of the earliest statutes aimed at protecting the ownership of creative works. However, it only contemplated a single copyright protection. Under the 1909 law, when owners licensed the use of their creative works to any party for any purpose, they effectively surrendered all of their copyrights to the other party at that time.
However, roughly 70 years later, Congress amended the previous law with the Copyright Act of 1976. This new statute recognized that creators can issue limited permissions which amount to less than a full transfer of copyright for specific purposes. For example, creators can allow another party to integrate different pieces of their intellectual property into a “collective work.”
In this situation, “collective works” refers to compilation publications, such as newspapers, magazines and encyclopedias. They are essentially a group of other people’s individual works that include written articles, pictures, and other material.
The Tasini v. New York Times Case
Jonathan Tasini was one of several freelance writers who brought suit for copyright infringement against The New York Times and a handful of other major print publications. The substance of the lawsuit noted that the freelance writers had permitted use of some of their articles in various print publication formats for periodicals. For example, one of Tasini’s articles appeared in the August 16th daily print edition of The New York Times in 1999.
Later, The New York Times and other periodicals formed an agreement with LexisNexis, an online database company. Under that agreement, print editions of the newspapers and magazines were deconstructed, and individual articles that appeared in them were published in an online database. Users could search for and retrieve articles, independent of the collective work print publications in which those articles originally appeared.
Tasini and the other authors brought suit against the periodicals in federal district court, which was their only option for legal action as federal courts have exclusive jurisdiction over copyright claims. The district court — which featured then-Judge Sonia Sotomayor – originally ruled in favor of the periodicals.
However, the authors appealed this decision, and the Second Circuit Court of Appeals later reversed it in favor of Tasini and the other authors in the case. The periodicals appealed that decision, the case went before the Supreme Court, and the Supreme Court ultimately affirmed the ruling from the appellate level.
Why the Supreme Court Made Its Decision about Copyright Protections
But what was the basis for the Supreme Court’s decision? Pursuant to the 1976 law, when authors offer up their creations to be a part of a collective work, they are not presumed to be surrendering their “exclusive rights” to copyright protections over their work.
Instead, they are giving a type of limited implied license to use the work for that specific purpose at that specific time. In §201(c) of the Copyright Act of 1976, the Act states that “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.”
This Act makes clear that authors and collective works publishers are free to affirmatively contract for a full copyright transfer if they wish. But this is not the default presumption in the eyes of the law. In the Tasini case, The New York Times made no such explicit copyright agreement with its freelance authors, so there was no contract to supersede the statutory assumption.
The collective works publisher actually holds its own copyright in the creation of a collective work. But that publisher’s rights to the original pieces that comprise the collective work are limited in the absence of a formal copyright transfer. The Act states that “the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution[s] as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”
The argument from the authors in the Tasini case was that, when The New York Times and the other periodicals deconstructed the original collective work and published each of the independent articles and materials through LexisNexis, they exceeded their latitude under the Act. The authors also argued that the periodicals infringed on the original copyrights, which were still held by the original authors.
The periodicals attempted to sidestep these arguments by claiming that the publications to online databases constituted mere “revisions” of the original collective works, as specifically permitted by the language of the statute. And this argument was persuasive at the trial court level.
However, the Court of Appeals and the Supreme Court both disagreed. They pointed out that, in their online published form, the individual articles were completely dissociated from the collective works in which they originally appeared – the issues or editions of the original newspapers or magazines in which they were initially approved to be published.
In fact, users of the LexisNexis interface could not retrieve the original collective works online even if they wanted to. This situation, the Courts argued, could scarcely be construed as a “revision” of the original collective works. Instead, the collective works all but ceased to exist in the online publication, so both courts ruled in favor of the authors.
In the end, the periodicals paid an $18 million settlement to the authors. The newspapers and magazines allowed all other existing freelance writers to opt out of online publication if they wished. However, those authors who wanted their work to remain in the LexisNexis database were required to waive their rights to legal action after the Tasini decision.
Also, most of the collective works publishers imposed more formal copyright transfer agreements for freelance journalism publications going forward. For better or worse, those agreements ensured that publishers would not run into these legal challenges in the future.
The Case Clarified the Boundary Lines of Copyright Protections
It was an expensive lesson for The New York Times and other publishers to learn about copyright protections. But the Tasini case did much to clarify the boundary lines of copyright protections between authors and collective works publishers. As a result, both sides can work together today in a fairer, more just and collaborative fashion.