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A victory for creators
Tasini et al v. NY Times et al

by Victor S. Perlman
ASMP managing director and general counsel

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Following is a summary of the opinion and dissent in this very important case in which the U.S. Supreme Court has ruled in favor of writer Jonathan Tasini et al. Also included are some of my thoughts and comments.

Background
As many of you will recall, the case involves articles to which freelance writers granted publishers limited rights to publish their articles in newspapers, magazines and other similar publications (collective works). The publishers later placed these articles into on-line and CD-ROM databases such as Lexis and Nexis. There were no written agreements or other licenses dealing with the issue of whether the initial publication rights granted by the authors included the rights to publish the articles electronically in digital databases. The authors sued for copyright infringement.

The publishers defended, claiming that the digital databases were covered by the privilege given to publishers of collective works under S201(c) of the Copyright Act. " In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work (i.e. the publishers) is presumed to have acquired only the privilege of reproducing and distributing the contribution (i.e. the articles) as part of that particular collective work, any revision of that collective work, and any later collective work in the same series..."

So, the issue before the court was whether the databases were merely revisions of the issues of the magazines and newspapers in which the articles were properly published, or were something else, something other than a revision.

Justice Ginsburg delivered the decision for the seven justices who made up the majority. Justice Stevens wrote a dissenting opinion in which Justice Breyer joined. The majority adopted essentially the same reasoning as the Second Circuit did when it ruled in favor of the writers (and reversed the decision of the District Court which had ruled in favor of the publishers). In a nutshell, it found that the articles in databases were placed there out of the context of the collective works for which they had been licensed and that, whatever the databases were (they "... might fairly be described as containing new anthologies of innumerable editions of publications..."), they were not revisions of the particular collective works for which the writers had given permission to publish.

The majority decision tracks the briefs of the writers and the amicus brief of ASMP fairly closely. A good part of the opinion, like the briefs, examines the legislative history that led to the "revision" language being included in the legislation. I will not repeat the Court's analysis here. The full decision can be seen here.

However, it is interesting to note that the Court dismissed the publishers' argument that the databases were just like converting the publications to microfilm or microfiche, pointing out that, unlike databases, microfilms contain the entire print publication, with the material appearing in the same sequence and context as in print.

The Court also rejected the "parade of horribles" argument that the publishers tried to use, in which they predicted devastating consequences if the Court ruled in favor of the writers. The "devastating consequences" would supposedly include gaping holes in the electronic record of published works. That is, works would be pulled from the electronic databases, thus making them "disappear" from the body of work available on computers. In response, the Court took an important step in giving instructions to the District Court for the Southern District of New York, to which the case now returns. It said, "... It hardly follows from today's decision that an injunction against the inclusion of these Articles in the Databases (much less any freelance articles in any databases) must issue." That is, it in effect suggested to the District Court that it should give a monetary award to the authors, but should not issue an injunction removing the articles in question from the databases. It has always been ASMP's position that this case is about money, it is not about removing materials from the public record, and the Court has now said the same thing.

In its decision, the majority also referred in several footnotes to the letter that Marybeth Peters wrote setting forth the Copyright Office's position in this case. That letter was instrumental. Jonathan Tasini and I worked long and hard to get it into the Congressional Record so that the Court could consider it, and we are greatly in Marybeth Peters' debt for writing it. Interestingly, the Court also referred in a footnote to another case in which ASMP had been actively involved, Community for Creative Non-Violence (CCNV) v. Reid. This serves as a vivid reminder to us of why the value of cases as legal precedent is such an important factor in ASMP's decisions concerning which cases to support.

Just as the majority of the Court tracked the writers' briefs, the dissenters closely followed the publishers' briefs. Essentially, they seem to value the convenience to the public of digital databases over the rights of the individual authors, and that view seems to color how they see things, like those databases. Unlike the majority, Justices Stevens and Breyer did not seem to understand (or perhaps ignored) the fact that this case is about writers getting paid for the rights they grant, not about access to information.

The Court's decision finds that the publishers violated the copyrights of the authors and sends the case back to District Court to fashion appropriate relief. This will probably mean more hearings and considerable negotiation between the two sides, both under the supervision of the District Court and independently.

Whatever happens, the District Court cannot miss the clear message that its remedy should be in the form of money damages and not in an injunction to remove the articles from the databases. This decision will also put considerable pressure on the litigation in which we are involved over the Boston Globe's freelancer contract. It is also likely to put increased pressure on National Geographic, which had been planning to appeal Jerry Greenberg's victory in the 11th Circuit to the Supreme Court. Geographic may now see the Supreme Court as less likely to take the case and/or to rule in their favor as they may have thought just one day ago.

Congratulations and thanks go to everyone involved, particularly: Jonathan Tasini, for having the courage to devote years of his life to this case; to Patsy Felch in Chicago, the attorney who convinced the Second Circuit to reverse the dreadful decision of the District Court and who is, in our view, the most important part of the Tasini Supreme Court legal team; to Marybeth Peters for having the courage to take a stand on behalf of the creative community without regard to political fallout; and to Donald Prutzman and Andy Berger in New York for their help in the filing of our brief.