• Key point. Publishers of journals and magazines may have the right to republish their materials in online electronic databases and on CD—ROMs without the need to obtain the permission of writers who contributed articles.
A federal court ruled that publishers can place the contents of magazines and other periodicals in online electronic databases and on CD—ROMs without obtaining the permission of writers whose articles were included in those periodicals. This case will be relevant to all ministers and lay church workers who contribute articles for publication in magazines and journals. The case involved writers who contributed articles to several prominent periodicals, including the New York Times, Newsday, and Sports Illustrated. The publishers sold the contents of their periodicals (including all of the individual articles) to “LEXIS/NEXIS” for inclusion in online electronic databases and on CD—ROMs. Several authors sued the publishers, claiming that the inclusion of their articles in the online electronic databases and on CD—ROMs violated their copyright interests. The publishers disagreed, claiming that the writers had authorized the publication of their articles in an online electronic format, and that the republication of articles in “collective works” is permitted by the Copyright Act. These two defenses will be considered separately below.
Transfer of rights
Did the writers transfer to the publishers the right to republish their articles in an electronic format? The publishers claimed that they did. Some publishers relied solely on “oral agreements” with writers. One publisher pointed to a written contract that all writers signed which transferred to the publisher “the right to first publish” the article in the same periodical. Another publisher relied on a special endorsement printed above the signature line on checks issued to writers in payment for their articles. The endorsement read: “Signature required. Check void if this endorsement altered. This check accepted as full payment for first—time publication rights to material described on face of check in all editions published by [the publisher] and for the right to include such material in electronic library archives.”
The court concluded that none of the writers had legally transferred any rights to their publishers to republish the articles in an electronic format. It acknowledged that writers can assign all or any portion of the copyright in their works to a publisher. If they choose, they can transfer the right to republish their articles in an electronic format. The Copyright Act specifies that “a transfer of copyright ownership … is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed.” The court concluded that this requirement certainly had not been accomplished by those writers who did not enter into any written agreement with their publisher. But what about the written contract by which writers assigned “the right to first publish” their articles to their publisher? The publisher argued that this transfer included not only the right to “first publish” the work in printed form but also the right to “first publish” the work in electronic form. The court disagreed, noting that “the right to publish an article first cannot reasonably be stretched into a right to be the first to publish an article in any and all mediums.” The court next addressed the endorsement language printed on the back of checks issued to writers, and concluded that this did not amount to a valid assignment of online electronic rights by the writers. The court conceded that “a writing memorializing the assignment of copyright interests doesn’t have to be the Magna Carta; a one—line … statement will do.” But even this minimal requirement had not been met in this case because the language was unclear. It referred to the right to republish articles in “electronic library archives,” and the court concluded that this language did not contemplate commercially sold CD—ROMs or online electronic databases. Further, the court pointed out that before the writers even signed their checks the articles had been republished in the online electronic databases.
Section 201(c) of the Copyright Act specifies that “[c]opyright 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 contributions as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.” Magazines, journals, and other periodicals containing articles written by several authors are “collective works.” According to section 201(c), persons who contribute articles to collective works retain the copyright in their articles unless they have assigned them to the publisher. If they have not assigned the copyright in their articles to the publisher, then the publisher has the limited privilege of “reproducing and distributing the contributions as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.”
Since the writers had not assigned any rights to the publishers other than the right to “first publish” their articles, the remaining question was whether the republication of the collective works in an electronic format was a “reproduction” or “revision” of the collective work. If so, then it was permissible according to section 201(c). The court concluded that the republication of the collective works (magazines and journals) on CD—ROMs and in online electronic databases met this test. It rejected the writers’ argument that the individual magazines and periodicals lost their status as collective works when they were placed online and on CD—ROMs.
Application. Let’s review the key points of this important ruling: (1) If you contribute an article to a magazine or journal, and you are not asked to sign a document assigning your rights to the publisher, you retain the copyright in your article and the publisher has only the minimal right to publish the article in its collective work and in any revision of that collective work or any later collective work in the same series. This includes the republication of your article in an online electronic database or on a CD—ROM. Note that the publisher has no legal right to alter or modify your article in any way. (2) If you contribute an article to a magazine or journal, and you are asked to sign a document that assigns all or some of your rights in your article to the publisher, then your rights will be determined by what you signed. In some cases you will be assigning all of your rights in your article to the publisher. If so, the publisher has the right to republish your work in any medium at any time, and can even sell it to another publisher, without asking for your permission. You may not even have the right to authorize the republication of your article in other publications. Such requests would need to be referred to the publisher. Obviously, these are all matters that should be frankly discussed with a publisher so that the written agreement will accurately express your desires. Tasini v. New York Times Co., 972 F. Supp. 804 (S.D.N.Y. 1997). [PCL11D]
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