HOLEY ARCHIVES: After Tasini, Publishers May Have To Hit The Delete Key

In the closely watched New York Times Co. v. Tasini digital copyright case, the Supreme Court ruled last week in favor of six freelance writers, and against a group of publishers and database providers that included such heavyweights as The New York Times, Time Magazine, and LEXIS/NEXIS. The Court held that the defendant publishers had no privilege to include the freelancers' articles in the archives of magazines and newspapers that long have been available on electronic databases like NEXIS. The result: copyright infringement liability for the publishers, and damages awards for the plaintiffs to be determined in further court proceedings.

This is one "David vs. Goliath" story (one of the plaintiffs is the aptly named David Whitford), however, in which the giant-toppling may have caused more harm than good. The Supreme Court's ruling may seriously impede public access to the complete archives of our nation's leading newspapers and magazines — as evidenced by the defendants' announcements last week that they will begin to remove well over one hundred thousand freelance articles from electronic databases to diminish the risk of further liability.

Plaintiffs' counsel has criticized the planned purge as the result of "pique, not . . . necessity." But with tens of thousands, if not more, disparate individuals who may now have copyright infringement claims against publishers, deleting freelance contributions is indeed a necessity. If, as it appears, most interested parties want to continue to move toward convenient public access to publishers' complete digital archives, then Congress may now have to step in to see that the risk of liability does not thwart this goal.

In 1993, freelance writers sued a group of major publishers and database providers, claiming copyright infringement based on the publishers' inclusion of the plaintiffs' articles, without permission, in digital archives made available on databases like NEXIS. The defendants argued that this even-then longstanding practice was legally protected because the articles were part of privileged digital "revision[s]" of print periodicals owned by the publishers. Under the Copyright Act, newspapers and magazines are considered "collective works," with the publisher owning the copyright in the collective work as a whole, and nonstaff contributors owning the copyright in their own individual works. The Tasini case turned on the meaning of Section 201(c) of the Act, which sets forth the extent to which newspapers and magazines may reuse freelance contributions without permission:

"In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the [freelancer's] contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series." (Emphasis added.)

According to the publishers, the "any revision" language was broad enough to cover electronic versions of their original collective works available on NEXIS and similar databases. The publishers also warned that a decision invalidating the industry's longstanding practice of including freelance articles in electronic databases would "result in wholesale deletions of freelance contributions, with correspondingly grave consequences for research."

More than seven years after suit was filed, the case made it to the Supreme Court. Affirming a Second Circuit decision for the plaintiffs(which was later modified), the Court (Justice Ginsburg writing for a 7-2 majority) rejected the publishers' contentions. The Court focused on different language in Section 201(c) — the requirement that, to qualify for the privilege, freelance contributions had to be republished as "part of" the original collective work or the later revision of that work.

In dissent, Justice Stevens (joined by Justice Breyer), argued that the Section 201(c) privilege was broad enough to encompass electronic versions of periodicals with individually retrievable articles. And, echoing the publishers, Justice Stevens warned that "the difficulties of locating individual freelance authors [to obtain licenses] and the potential of exposure to statutory damages may well have the effect of forcing electronic archives to purge freelance pieces from their databases."

Although refusing to engage in such "speculation about future harms," the majority went out of its way to raise the possibility of solutions that would permit the publishers to continue to distribute their complete archives. The Court made approving reference to statutory music-licensing regimes and predicted that, if necessary, courts "or Congress" could devise a model for distributing complete digital archives while "remunerating authors."

Tasini affects only the contributions of freelancers, as the law always has been clear that publishers own the copyright in staff-prepared articles. And commentators have been quick to point out that the revision privilege of Section 201(c) applies only in the absence of a contract, and that in the last few years most publishers have solved their "Tasini problem" going forward by insisting that freelancers now convey electronic rights when submitting contributions. The Tasini decision's major impact would therefore appear to be on the availability of complete archives from periodicals published before the mid- to late-1990s.

Even so, the National Writers Union (NWU), which helped bring the Tasini lawsuit, estimated last week that the publishing industry's potential liability to freelance writers across the country could range from $2.5 billion to $600 billion. The NWU also said that, although it would prefer to reach a settlement, it was "prepared to mobilize tens of thousands of writers and other creators to make claims based on the Supreme Court ruling." Already, three separate Tasini-inspired class action lawsuits on behalf of freelancers are pending in federal court in New York City. And any number of additional lawsuits may now be expected to follow.

It is therefore not surprising that, following the Supreme Court's decision, defendant publishers announced plans to delete freelance articles from electronic databases. The New York Times reported that it alone might have to delete 115,000 articles by 27,000 writers.

The plaintiffs and the NWU quickly decried this announcement, urging the publishers instead to negotiate with the plaintiffs and to license freelance works through private licensing agencies such as the Publication Rights Clearinghouse. In an "Open Letter to Leaders of the Media Industry," the NWU advised that "there is no need to delete articles from your databases. We want to see our work continue to be disseminated by new media so you can make a profit and we can make a fair living."

This is bad advice. Any publisher that takes it risks being inundated by lawsuits brought by individuals whose works were not removed from databases. Although the NWU and similar organizations might refrain from suing during a negotiation period, they cannot hope to control the legions of individuals who may now have a cause of action thanks to Tasini and might prefer to sue than settle. Moreover, the simple fact is that no matter how aggressively entities like the NWU try to sign up authors, no private entity can ever be in a position to guarantee that all or nearly all of a publisher's freelance contributors will refrain from suing over the publication of the publishers' complete digital archives. Without such a guarantee, the financial risk of continuing to engage in potentially infringing distributions is likely to be untenable.

Additional uncertainties abound in the wake of the Tasini decision. To begin with, the Supreme Court's opinion focused only on databases that, like NEXIS, provide articles isolated from the periodicals in which they originally appeared. The next wave of digital archives, however, so-called "print clones," could pass muster under the reasoning of Tasini. These products, being rolled out this year, will provide exact replicas of publications including The New York Times and The Wall Street Journal. The Court's explanation in dicta of why microform versions of newspapers qualify for Section 201(c) protection — "articles appear on the microforms . . . in precisely the position in which the articles appeared in the newspaper" and "the user first encounters the [a]rticle in context" — indicates that the Court might consider these digital replicas to qualify for the privilege by presenting individual articles as "part of" revisions of the original periodicals.

On the other hand, other legal roadblocks to such archives may still remain. In ruling against the publishers, the Supreme Court expressly reserved decision on two other grounds advanced for defeating the privilege. First, the Court noted that the U.S. Register of Copyrights had "vigorously" argued that the Section 201(c) privilege allows publishers only to "reproduce" and "distribute" freelance contributions as part of a collective work, but that databases viewable on a computer implicate the separate "display" right under Section 106(5) of the Copyright Act and thus fall outside the privilege. Second, the Court noted the plaintiffs' argument that because Section 201(c) gives publishers only a "privilege" to publish, rather than a "right," any revision privilege would be personal to the publishers and could not be transferred to database providers like NEXIS.

The Supreme Court may soon have an opportunity to address these uncertainties. In March 2001, in Greenberg v. National Geographic Society, the Eleventh Circuit Court of Appeals in Atlanta held that the publisher of National Geographic Magazine was not entitled to claim the Section 201(c) privilege in connection with its publication of a CD-ROM that, like the new "print clones," displayed exact digital replicas of back issues of the magazine. The Eleventh Circuit has denied a petition for rehearing, and the time for the National Geographic to petition for certiorari has not yet expired.

There is no assurance that, even if it takes the National Geographic case, the Supreme Court will decide any of the issues discussed above, let alone all of them. Judicial resolution of the digital-archives controversy is therefore likely to be incomplete, and publishers may have to continue to learn the hard way — in court — what they can and cannot publish electronically. Private resolution also appears to be impossible to achieve, if just one publication would have to secure licenses from all or nearly all of 27,000 individuals to make its complete archives available.

If most interested parties agree that ensuring the availability of complete digital archives is in the public interest, then it may be up to Congress to devise a remedy that addresses the economic concerns of freelancers while allowing publishers to provide continued public access to the full historical record provided by our nation's newspapers and magazines.