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Electronic Media

§ 9.05.06
Key point § 9-05.06. Publishers cannot 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.

Many religious organizations have published periodicals for many years, and would like to reprint those periodicals on a website or on a CD-ROM. If they required the authors of each article ever published in their periodical to assign all rights (including copyright) to the publisher, then there is no need to obtain consent. However, in most cases there is no such history. Either no agreements were ever used, or they were used for only some years, or they did not clearly assign copyright to the publisher. In any of these cases, the authors retain copyright in their articles. But, according to section 201(c) of the Copyright Act, the publisher has the right without the authors' consent 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." This issue was addressed by the United States Supreme Court in an important ruling.[126] Tasini v. New York Times Co., 121 S.Ct. 2381 (2001). 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. Each article was retrievable by users in isolation, clear of the original print publication's content. Six 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.

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.

Section 201(c) of the Copyright Act specifies that "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 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 was not a reproduction or revision, and so the inclusion of the articles in these media violated the copyright interests of the authors. It observed,

A newspaper or magazine publisher is thus privileged to reproduce or distribute an article contributed by a freelance author, absent a contract otherwise providing, only "as part of" any (or all) of three categories of collective works: (a) "that collective work" to which the author contributed her work, (b) "any revision of that collective work," or (c) "any later collective work in the same series." In accord with Congress' prescription, a "publishing company could reprint a contribution from one issue in a later issue of its magazine, and could reprint an article from a 1980 edition of an encyclopedia in a 1990 revision of it; the publisher could not revise the contribution itself or include it in a new anthology or an entirely different magazine or other collective work."
Essentially, section 201(c) adjusts a publisher's copyright in its collective work to accommodate a freelancer's copyright in her contribution. If there is demand for a freelance article standing alone or in a new collection, the Copyright Act allows the freelancer to benefit from that demand; after authorizing initial publication, the freelancer may also sell the article to others. … When an author produces a work which later commands a higher price in the market than the original bargain provided, the copyright statute is designed to provide the author the power to negotiate for the realized value of the work. It would scarcely "preserve the author's copyright in a contribution" as contemplated by Congress if a newspaper or magazine publisher were permitted to reproduce or distribute copies of the author's contribution in isolation or within new collective works.

The Court noted that collective works were not republished intact by LEXIS/NEXIS. Rather, individual articles were available to users, completely detached from the collective work in which they originally appeared. As such, the Court concluded that the articles no longer were part of a collective work and so the section 201(c) exception could not apply. It observed,

In determining whether the articles have been reproduced and distributed "as part of" a "revision" of the collective works in issue, we focus on the articles as presented to, and perceptible by, the user of the databases. In this case, the databases present articles to users clear of the context provided either by the original periodical editions or by any revision of those editions. The databases first prompt users to search the universe of their contents: thousands or millions of files containing individual articles from thousands of collective works (i.e., editions), either in one series or in scores of series. When the user conducts a search, each article appears as a separate item within the search result. [In some databases] an article appears to a user without the graphics, formatting, or other articles with which the article was initially published. In [other databases] the article appears with the other materials published on the same page or pages, but without any material published on other pages of the original periodical. In either circumstance, we cannot see how the database perceptibly reproduces and distributes the article "as part of" either the original edition or a "revision" of that edition. … The databases offer users individual articles, not intact periodicals. In this case, media neutrality should protect the authors' rights in the individual articles to the extent those articles are now presented individually, outside the collective work context, within the databases' new media.
Let's review the key points of this important ruling:(1) Authors who contribute an article to a magazine or journal, and who do not sign a document assigning any rights to the publisher, retain the copyright in their article and the publisher has only the minimal right to publish the article in its collective work and in any reproduction or revision of that collective work or any later collective work in the same series. Such articles may be republished in an online electronic database or on a CD-ROM so long as they are presented along with the entire collective work in which they first appeared. However, the publisher does not have the right to republish articles in isolation and detached from the collective work in which they appeared.(2) Authors can assign some or all of their rights to a publisher in a written agreement. Copyright is divisible, so authors can assign any portion of their legal interests to a publisher. For example, authors can assign all of their copyright, in which case the publisher can republish the article in any format at any time in the future without having to obtain the authors' consent. Further, the publisher (and not the authors) would respond to any requests from other publishers to reprint the article. Authors can assign partial rights to a publisher, such as the rights to republish the article in any format or medium at any time in the future. The Supreme Court noted that "it bears reminding that these publishers and all others can protect their interests by private contractual arrangement."(3) Many religious organizations have published periodicals for many years, and would like to reprint those periodicals on a website or on a CD-ROM. According to section 201(c) of the Copyright Act, the publisher has the right without the authors' consent 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." As the Supreme Court noted, this provision gives publishers the right to republish articles in electronic or digital media so long as the entire collective work in which they appeared is published. If the articles are accessible individually and detached from the collective works in which they first appeared, then section 201(c) does not apply and the republication violates the authors' copyright interests.(4) In some cases, a religious organization that publishes a periodical will own the copyright in the articles as a result of the "work made for hire" doctrine. The Copyright Act specifies that the copyright in any work created by an employee in the course of his or her employment belongs to the employer rather than the employee unless the employer has assigned the copyright back to the employee in a signed writing. For example, if a religious organization publishes a periodical that contains articles submitted by employees, the copyright in those articles belongs to the organization so long as (1) they were written by employees in the course of their employment, and (2) the employer did not assign the copyright back to the employees in a signed writing. If an article is a work made for hire, the copyright in that article belongs to the employer and so there is no need to obtain the author's consent for any future publication of that article, in any medium or format including websites and CD-ROMs.(5) There is another category of work made for hire that should be considered. The Copyright Act specifies that "works made for hire" include "a work specially ordered or commissioned for use as a contribution to a collective work … if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." To illustrate, a religious organization can commission the writing of an article by an author, and the article will be a work made for hire (and the copyright will belong to the publisher) if the parties execute a written agreement confirming that article is a work for hire.(6) If authors retain the copyright in their articles, a publisher's limited authority to republish the collective work (including the articles) in the future does not include the right to revise the text of the articles. That right belongs exclusively to the authors, unless they have assigned it to the publisher.
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