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List: dmca-discuss
Subject: [DMCA_Discuss] WS>>Copyright
From: carl william spitzer <cwsiv_home () juno ! com>
Date: 2002-03-27 18:46:33
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From: Webreference Update<listsupport@internet.com>
Date: Thu, 28 Jun 2001
(((((((( WEBREFERENCE UPDATE NEWSLETTER )))))))))))))
by Michael Landau
The Supreme Court Monday ruled in The New York Times v.
Tasini that independent contractors' work could not be
redistributed in databases and CD-ROMs. Unlike Microfilm
which holds exact copies of publications, databases "disag-
gregate" articles out of context, thereby taking the au-
thor's work out of the original "collective work." By their
very nature, databases allow individual articles to be
retrieved and reaggregated, thus violating section 107 of
the 1976 Copyright Act.
The Court held "[The] Databases do not perceptively
reproduce articles as part of the collected work to which
the author contributed or as part of any 'revision'
thereof.... But unlike the conversion 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."
One of the issues related to the dispute, but not
addressed in detail in the case, is the "Work Made for Hire"
provision (section 101) of the 1976 Copyright Act which
states that the work of employees and appropriately con-
tracted freelancers is "work made for hire," therefore
copyright is owned by the employer. If work is done by an
independent contractor, the copyrights in the work belong to
the author, unless there is either an explicit transfer of
rights in the agreement or the written requirements for
turning the work into a "work made for hire" are met. The
problem arises when no, or a vaguely worded agreement, exist
between the independent contractor and an employer. In the
Tasini case, there were no agreements of transfer or "work
made for hire" agreements between the authors and the pub-
lishers.
In Tasini, the authors wrote articles for publications
(NYT, Sports Illustrated etc.) but retained copyright. Once
the publications transferred their articles to a database
(Nexis/Lexis etc.) the authors contend that their copyright
was violated, and wanted renumeration. By finding for the
plaintiffs in this case, the defendant's lawyers contend
that the Court has opened a can of worms for publishers.
During oral argument before the Supreme Court, attorneys
speculated that the Times would have to delete all freelance
articles from their databases, effectively wiping out parts
of history. Justice Ginsburg, who authored the majority
opinion, deemed this speculation to be "no basis" for their
current decision.
We talked to Professor Michael Landau of Georgia State
University College of Law, an expert in Copyright Law, about
this landmark case as it applies to the Internet and pub-
lishing in general.
WR: Why is the Tasini case important?
ML: The Tasini case is important because it establishes
that the "hard copy" publications and the portions of
the publications that appear in electronic searchable
databases are not one and the same for purposes of
copyright law. If the publishers do not have the
rights, either through the "works made for hire" doc-
trine or by contract with respect to other electronic
publications, they will be liable for infringement, and
will be obligated to pay damages to the authors whose
work is put "on line."
WR: Summarize what Tasini means for authors and publishers.
ML: It is also important because it puts all parties, pub-
lishers and authors alike, on notice that the electron-
ic rights must be specifically negotiated. If both
publishers and authors know that the electronic rights
are separate, the agreements and prices can be tailored
accordingly. The reality, however, is that because of
their superior bargaining position, publishers will
probably be the long-term beneficiaries. Publishers
will now, if they have not already done so, rewrite
their contributing author agreements expressly stating
that the authors give them the right "to publish,
republish, and distribute the author's contribution(s)
at any time in any medium now known or developed in the
future."
There may be a few authors who can refuse and demand
that all electronic rights be reserved, but those
authors will probably be few and far between.
WR: How does the Copyright Act apply in this case?
ML: This is entirely a copyright case. The case was decided
under section 201(c) of the Copyright Act. The pivotal
issue was whether or not the electronic individual
versions of the articles were part of "revisions" of
the original work. If they were legal "revisions," then
the publishers were free to have them included in
searchable databases, such as LEXIS/NEXIS. If they were
not, then the inclusion and delivery of the electronic
versions violated the exclusive rights of reproduction
and distribution under section 106 of the Act.
The Court held that the electronic versions were not
"revisions."
WR: Revisions: Explain the importance of distinguishing
between revisions and new collections in this
case. What constitutes a revision?
ML: Under section 201 (c) of the Copyright Act, the pub-
lishers have a privilege to republish "revisions" of
the work without obligation to the authors. I will give
a few examples of "revisions." Assume, for example,
that one is a newspaper publisher with several editions
of the newspaper. (Early edition, late edition). The
later edition with some different stories and/or arti-
cles would be a revision of the first. It would not be
reasonable for publishers to have to obtain permission
from each and every author in order to print the same
story later in the day because technically there was a
slightly different arrangement and slightly different
content in the evening paper.
Transferring the newspaper to microfilm or microfiche
would be a revision. Most likely, transferring the
paper or magazine to Braille would be a revision. An
important factor regarding whether the later publica-
tion is a "revision" is whether the contents of the
publication are basically reproduced intact without
substantial change.
The Court found that the inclusion of the individual
articles in a database of essentially all articles was
not a revision. The Court was also bothered by the fact
that most of the articles are retrieved and/or repro-
duced and distributed as individual articles and not as
a part of the entire collection in which it originally
appeared.
WR: Work made for hire. What's the difference between an
employee and an independent contractor?
ML: In 1989, the Supreme Court decided a case involving the
standard for "works made for hire." Prior to 1989,
there had been much disagreement among the federal
appeals courts. Section 101 of the Copyright Act
provides that a "work made for hire" is either 1) a
work that is created by an employee within the scope of
employment, or 2) in the case of a commissioned work, a
work that belongs to one of nine specific enumerated
categories, and the parties have signed an agreement
specifically stating that the work is a "work made for
hire." It should be noted that one of the categories
included in the nine is a "contribution to a collective
work." Therefore, had the publishers in the Tasini
cases included such language in agreements, the works
could have been "works made for hire." The problem, as
stated above, was that there was no agreement in writ-
ing.
Most of the litigation in the past regarding "works
made for hire" arose because there had been no written
agreement between the parties. The disputes centered
upon the definitions of "employer" and "employee." In
Community for Creative Non-Violence v. Reid, the Su-
preme Court rejected two polar standards and chose a
middle position. The court rejected the proposition
that an "employee" was only a "formal salaried em-
ployee," one who gets a regular paycheck with taxes
withheld, etc. The court also rejected the notion that
an "employee" is anyone who is supervised by the paying
party.
The court held that for "works made for hire" purposes,
an employee was one who had a sufficient relationship
with the paying party under the law of agency. In doing
so, the Supreme Court articulated a multi-factor test,
now referred to as the Reid test, that looked at, among
other things, whether the artist or author was usually
in business for himself, who provided the tools, where
the work was done, whether the paying party had the
power or right to assign additional projects, how the
artist or author was paid, the tax treatment, etc.
WR: Do you think that the Copyright Act of 1976 is outdated
in terms of electronic publication (Internet)?
ML: Actually, I do not. The issues in this case are simi-
lar to issues that have been litigated for years. For
example, in the 1970s and 1980s, there were cases
dealing with whether "motion picture rights" included
the rights to distribute the films on videocassettes,
or even to show them on television for that matter.
Consider this hypothetical: In the 1940s or 1950s,
composer is asked to write music for a film, or an
author is asked to write the screenplay. People did not
have VCRs and there was no market whatsoever for other
modes of distribution. The author/composer assumed that
he or she was being paid only for the movie's theatri-
cal exhibition. Then, fast-forward twenty or thirty
years. Should the studios or distribution companies be
liable for royalties related to the uses in new media.
Those cases hinged upon the language in the contracts.
In those cases in which the transfer was for "theatri-
cal exhibition" only, the plaintiff authors or compos-
ers won. In the cases in which the transfer was for
"exhibition, display, transmission, or distribution in
any media, now known or developed in the future" the
studios won.
There have been copyright disputes related to almost
every new technology, such as photographs, player
pianos, television, video, photocopy machines, etc. The
electronic publishing dispute is merely the most recent
in a long line of disputes.
WR: I read the transcript from the trial. Why is it so
important that the articles are sent over sepa-
rately and not as a whole paper?
ML: Again, this relates to the "revision" issue. If the
entire paper was sent or was retrieved and distributed,
it would be more like a "revision." The publishers had
the right to do this. The Court believed that if only
individual pieces of the work are retrieved or sent,
the rights of the authors were infringed.
This is related again to technical provisions of the
Copyright Act. Copyright in the collection extends
only to the collection, not to the individual pieces
contained therein. Those still belong to the author.
According to the Court's logic, the paper may reprint
entire editions intact or include entire editions
intact, but may not get into the business of single
articles. This part of the opinion is troubling, for
taken to its logical extreme, it would appear that the
majority of the court would find the publications
liable for copyright infringement for selling individu-
al reprints of individual articles, even in the off-
line hard copy world.
WR: Disaggregation - What about search engines or Meerkat,
that index numerous articles? How does fair use play
with RSS descriptions? Reusing these in newsletters or
Web sites (Meerkat) etc? Hasn't the author implicitly
given permission to use the work (meta title/url/desc)
by publishing a public RSS file? (see http:
//webref.com/authoring/languages/xml/rss/ for RSS info)
ML: You raise an interesting issue, that of an "implied
license." This is fairly uncharted territory, and
courts need to address this more. One thing, though, is
for certain, the mere inclusion of material on a Web
site does not give an implied license to anyone to do
anything with it. The extent would probably be only to
view it and download it yourself.
With respect to search engines, inclusion of little
bits of text would probably be a fair use. It is also
doubtful that the authors of original material would
object (sue over it). Inclusion of small amounts of
text in search results is not a substitute for the
original text; it merely aids in directing users to the
original material. There was actually a case involving
search engines that included thumbnail photographs in
the results called Kelly v Arriba. The court held that
such a use was a fair use.
WR: "It should be noted that a mere change of medium does
not necessarily mean that there cannot be a revision.
Including each and every page of a newspaper on micro-
film, in which the original arrangement of the stories
is preserved for archival purposes, probably would
qualify as a 'revision.'" Would an exact PDF replica
qualify as a revision?
ML: I would argue that a PDF replica is similar to micro-
film or microfiche. A publisher should be allowed to
reproduce the entire work in PDF format as a revision.
There is an exception. If the author expressly states,
as above, that all electronic and other non-paper media
are excluded from the transfer, a strong argument can
be made that under those terms even a PDF would in-
fringe.
WR: Written agreement: Does submitting an online form
qualify as a written agreement?
ML: That depends. Section 204 of the Copyright Act
provides that all "transfers" must be in writing and
"signed by the owner of the rights conveyed or such
owner's duly authorized agent." Section 101 relating to
"works made for hire" also requires a "signature." I
would argue that an online form is a "writing." The
open issue is what constitutes a "signature." While a
complete transfer meaning an assignment or an exclusive
license must be in writing, a non-exclusive license
need not be in writing. Therefore for non-exclusive
licenses the signature issue disappears.
WR: How important is it to have a contract before publica-
tion?
ML: After Tasini, for publishers it is extremely important.
If there is no written agreement or if the work is not
a "work made for hire" under the Reid agency law prin-
ciples, the rights belong to the authors. If the pub-
lishers publish without permission, they can be liable
after publication for damages. All publishers should be
using written agreements to acquire rights, or face
financial exposure for infringement.
This case may change the relationship between publish-
ers and freelancers by requiring written agreements for
almost every assignment.
# # #
Michael Landau is Professor of Law and Head of the
Intellectual Property, Technology, and Media
Studies Group at Georgia State University College
of Law, where he teaches courses in copyrights,
trademarks, unfair competition, entertainment law,
computer law, torts, and antitrust. Professor
Landau received his law degree from the University
of Pennsylvania Law School, where he was a recipi-
ent of the Nathan Burkan Memorial Copyright Award.
Professor Landau serves on the Board of Directors
of the Georgia Volunteer Lawyers for the Arts and
the Atlanta Contemporary Art Center and the Edito-
rial Board of http: //www.GigaLaw.com. He is also
a blues and jazz guitarist. He can be reached at
mlandau@gsu.edu.
Further Reading:
U.S. Copyright Office
http: //lcweb.loc.gov/copyright/
Supreme Court opinion - NYT v. Tasini
http: //www.supremecourtus.gov/opinions/00pdf/00-01.pdf
Electronic Publishing Rights and New Legal Challenges
http: //gigalaw.com/articles/2001/isenberg-2001-06-p1.html
The Importance of Electronic Publishing Rights
http: //www.gigalaw.com/articles/landau-2000-01-p1.html
Freelancers Win in Case of Work Kept in Databases
http:
//www.nytimes.com/2001/06/26/technology/26BIZC.html?searchpv=day02
The Reaction: Publishers Set to Remove Older
Articles From Files
http:
http://www.nytimes.com/2001/06/26/technology/26COPY.html?searchpv=day02
Writers Aren't Cashing Checks Yet
http:
http://www.wired.com/news/politics/0,1283,44860,00.html
Scott Clark
Managing Editor, WebReference.com
sclark@internet.com
Dan Ragle
Assistant Editor, WebReference.com
dragle@internet.com
Andrew King
Newsletter Editor, WebReference.com
aking@internet.com
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