Digital Re-Use

88

September 17, 1997

On August 13, 1997 in New York, federal judge Sonia Sotomayor in Jonathan Tasini et.al. vs. the New York Times et.al. found in favor of five publishers and allowed them to make Internet and CD-ROM re-use of articles previously published in their print publications without checking with or compensating the writers in any way.

Because this is a federal court decision supporting positions taken by major publishers - New York Times, Sports Illustrated and Newsday - it is likely to have a major impact on the stock photography business.

The plaintiffs, were writers Jonathan Tasini, Mary Kay Blakely, Barbara Garson, Margot Mifflin, Sonia Jaffe Robbins, and David S. Whitford, and they brought suit against The New York Times Co., Newsday, Time Inc., The Atlantic Monthly Co., Mead Data Central Corp. (Lexis/Nexis) and University Microfilms Inc. (The Atlantic Monthly settled with the plaintiffs prior to this decision.)

The publishers had re-published the contents of their print publications on-line and on CD-ROM in a format that differed greatly from the way the articles originally appeared. The writers argued that the publishers should have first obtained permission from the freelance writers and in addition compensated them for this use. The publishers argued that their "collective works" copyright gave them broad rights to re-use the material without providing any additional compensation to the writers.

The writers claimed that the publishers were reaping a financial windfall from new media - one that Congress never intended when it formulated the copyright law.

Contracts

Most of the articles were produced as a result of verbal agreement with very little, if any, paperwork.

However, it was acknowledged that Whitford had a decidedly more formal relationship with Sports Illustrated. His contract with SI granted the following rights:

(a) the exclusive right first to publish the Story in the Magazine:


(b) the non-exclusive right to license the republication of the Story whether in translation, digest, or abridgement form or otherwise in other publications, provided that the Magazine shall pay to you fifty percent (50%) of all net proceeds it receives for such republication: and


(c) the right to republish the Story or any portions thereof in or in connection with the Magazine or in other publications published by The Time Inc. Magazine Company, its parent, subsidiaries or affiliates, provided that you shall be paid the then prevailing rates of the publication in which the Story is republished.

One of the many strange things about the decision is that this contractual arrangement, while mentioned in describing the relationships of the parties in the suit, appears to have been given no weight whatsoever by the Judge in making her overall decision in the case.

If publishers "collective works" rights exist only when there is no formal contract to the contrary, this case is much less worrisome than if the "collective works copyright" somehow takes precedence over formal contracts. Several questions remain unanswered:

Is the language of the Whitford contract somehow not specific enough to cover the rights granted?

To exclude rights, is it necessary in a contract to itemize every right that is excluded, or do contracts normally only cover those rights which are specifically granted?

Does a publisher of a "collective work" have certain rights that take precedence over the right specified in formal contracts the publisher has signed?

None of these issues are clearly answered in Judge Sotomayor's decision. There are rumors that the plaintiffs' lawyer may not have sufficiently emphasized the contract point in her argument, and thus the judge ignored it when making her ruling. The fact that the contract was mentioned in Judge Sotomayor's decision may present problems when the Tasini case is cited as precedence in future cases.

After the decision, lawyers told "Contracts Watch," an on-line publication of the American Society of Journalists and Authors, that a written agreement overrides any statute-based presumption that a publisher may take certain electronic rights for free. If a contract specifies payment for electronic rights--as many do--or grants serial rights or publication rights "in print only," the free ride given publishers by the court decision doesn't hold.

In a letter from PACA to National Geographic Interactive, after the decision and relative to another matter (see PACA letter on page 5), PACA Attorney, Robert M. Cavallo of Cavallo & Wolff, said:

PACA anticipated the problems of electronic copying years ago and that is why in the suggested terms of delivery and invoice language which appear in the PACA Legal Handbook, language was included to prevent the users from electronically using stock photos without permission.

How contractual rights relate to "collective works copyrights" should be further clarified in the appeals process.

What Is A Revision?

For Judge Sotomayor, the key copyright question in this action hinges around Section 201(c) of the U.S. copyright law.

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. 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 contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

In her 56 page decision Judge Sotomayor upheld the rights of the "collective works" publisher to do several things:

1 - Make very extensive revisions in a work, including eliminating large sections and focusing on small elements of the whole work. A revision doesn't have to be even close to the original.

2 - It can be altered to the point of having a new title and being a part of a larger work (such as General Periodicals OnDisc ), but Judge Sotomayor also says, "Defendants are not permitted to place plaintiffs' articles in 'new anthologies' or 'entirely different magazines or other collective works,' but only into revision of those collective works in which the plaintiffs' articles first appeared."

3 - The New York Times was allowed to put the Sunday Magazine and Book Review on CD-ROM and distribute them separate from all the rest of the editorial content of the paper. Thus, very small portions of the whole "collective work" are permissible.

4 - The privilege of making a revision is transferable to another company. Practically the only limitation, according to Judge Sotomayor, is that the revision must be made by the publisher or the publisher's agent. Thus, a third party would not be able to take published material and re-use it on the internet without the publishers permission, but the publisher has great latitude in how he can re-use it.

5 - The judge did say that a single article could not be offered to another publication, not affiliated with the parent.

6 - In her ruling the judge cited several types of "exploitation" by publishers that wouldn't be allowed under copyright law, including turning a freelance article into "a full length book" or creating "television or film versions of individual freelance contributions."

Appeal

A motion for Reargument of Tasini has been filed in Judge Sotomayor's court. The court has set September 26th as the final day to present arguments. At that point the judge may make an immediate decision or prepare another substantive opinion.

The judge is asked to reconsider three points:

• Whitford's position vs. Sports Illustrated since he had a written contract with SI. Opposing counsel acknowledged the contract. It is argued that this puts him in a different position from the other complaints who fall under 201(c).

  
  

• 201(c) requires that there must be obvious "substantial similarity" between two uses for a judge to make a summary judgement. If "substantial similarity" is a disputed question of fact it should be left for resolution by a jury.

  
  

• A question as to whether plaintiffs raised an argument at the appropriate time and thus did not give the defendants adequate time to address the issue in discovery or in argument. Plaintiffs argue that the record shows they did raise the issue appropriately.

Once this process is complete the next step would be to file an appeal in Federal Court.

Photographers and Writers Dilemma

For the last 21 years freelance photographers and writers have been producing work for relatively low fees for the first initial use with the contractual understandings -- backed up, we believed in law -- that we would receive appropriate payment for additional uses.

In fact, many creators have earned much more from the second rights to the work, than they were paid for the original use. Many could not support themselves on the fees paid for the initial use, and can only earn a decent living through a combination of initial use fees plus re-use fees.

Now, many of those re-use fees for the work done during the past 21 years have been terminated. This ruling certainly brings into question re-use fees for the publication of books, or chapters from books, as well as electronic uses. Thus, it affects every editorial creator.

Sotomayer indicated that Congress is free to change the law if it wants to take into account the new-media revolution and the resulting questions about writers' rights to their work, but she points out the courts can't act "on the basis of speculation as to how Congress might have done things differently had it known then what it knows now."

Sotomayor said that she had to apply the copyright law as it is written, even though new-media technology couldn't have been anticipated in 1976 when Congress revised the law.

ASJA Comments

Claire Safran, president of the American Society of Journalists and Authors (ASJA) said:

"While Jude Sotomayor's reading of the law and her logic may seem reasonable, her understanding of electronic publishing is seriously flawed.

"We're astonished that the judge bought the defense argument that database use constitutes only a 'revision' of an issue of a magazine or newspaper. It doesn't. And we're even more astonished at her statement that 'the electronic databases retain a significant creative element of the publisher defendants' collective works.' They don't.

"Electronic database compilers strip out nearly everything a publisher brings to its publication: photos, drawings, advertisements, page layout, headline type, index, table of contents--virtually everything that makes a magazine or newspaper what it is. Each article is reduced to the writers' words. And those words belong to the writers.

"The data base compilers then mix that issue's articles with hundreds of thousands of articles from years worth of hundreds of other publications, making a new and totally different compilation. A computer user simply cannot find the actual issue of the publication itself in the database--because it doesn't exist. A 'revision' of the publication? Hardly."One other important point is that this case revolves around a part of the copyright law that applies only when there is no written contract between publisher and author. But most magazines--and, increasingly, newspapers--do use written agreements. So the ruling in this case doesn't apply to most articles by freelance writers published in major magazines and newspapers.

"We think an appeals court would see things very differently from Judge Sotomayor."

Michael Gaynor, called the judge's decision "an Alice-inWonderland type interpretation" of federal copyright laws.Bruce P. Keller, a Debevoise & Plimpton attorney representing the media organizations, said that all the judge's ruling does is permit publishers to do what they've always done -- reproduce the contents of their publications in other formats. Where once they did so on microfilm, now they're doing it in new media.

George Freeman, assistant general counsel for the New York Times, said the decision means "electronic reproduction of freelance articles such as in Lexis will be treated no differently than those articles on spools of microfilm."

Lawyers for the defendants acknowledged the decision covers only certain electronic re-uses of freelance articles; for example, it says nothing about the kind of "cherry picking" that typifies many Web sites.

The Wall Street Journal story after the decision said sweepingly, "Media companies in recent years have started requiring freelancers to relinquish their rights to the electronic versions of their work."

ASJA pointed out, "That's true of some, but by no means all publishers. Many publishers pay for electronic rights, whether its because they recognize that a single decision by the lowest federal court is not much protection this early in the game, or because they choose not to jeopardize the editor-writer relationship by bullying, or simply because it's right."

Creators Options

Creators need to band together to support an appeal if they want to protect work that has been published in the past 20 years. If this decision stands unchallenged publishers will be able to make almost unlimited use of the work they have published in the last two decades without providing any additional compensation to the creators.

In addition, creators need to actively support federal copyright revision. However, even if Congress changes the Copyright Law that will probably only affect work after the new law is signed. It would be highly unlikely that changes in the current copyright law would in any way affect work produced between 1976 and the signing of any new law.

Finally, freelance creators must insist on much higher initial assignment fees in order to cover themselves for the potential loss of reuse income.