The Digital Rights Dilemma


Like fly fishing or, say, ‘Star Trek,’ intellectual property law is a subject about which one either cares a great deal or not at all. But even if you normally don’t give a whit, last week’s ruling in Tasini v. The New York Times deserves your attention. A three-judge panel of the U.S. Court of Appeals for the Second Circuit unanimously ruled that, in essence, a publisher must explicitly purchase electronic rights from an author before reproducing the author’s work in electronic formats. Pretty straightforward stuff, or so it would seem— yet the case’s implications are currently in furious dispute. To wit: Tasini marks a watershed victory of a literary David over a corporate Goliath, or it doesn’t. Instead it threatens the integrity of the historical record, unless it doesn’t do that either. It at least shores up an author’s eroding rights over his or her own work, most might possibly agree. One thing that’s certain is that this case is a significant addition to Internet case law, unless of course it’s not. Confused? Don’t worry, so are the lawyers.

In theory, the field of law sets out to clear things up. In practice, this is rarely its effect: adjudication begets litigation, which then begets more adjudication, which then . . . well, you get the idea. Add to this the inevitable conflicts that arise whenever society’s slowest-moving institution tackles society’s fastest-moving industry. The suit was originally filed in 1993, well before the ubiquity of the Internet. At issue was the unauthorized sale of articles written by Jonathan Tasini, president of the National Writers’ Union, and five other freelance writers, to the electronic database Lexis-Nexis and the CD-ROM manufacturer University Microfilms International. The publishers named as defendants were The New York Times Co., Newsday Inc., the Time Inc. Magazine Co. and The Atlantic Monthly Co. Tasini et al. had sold print rights, and print rights only, to the above publishers between 1990 and 1993.

However, the case didn’t percolate up through the federal docket until 1997, by which time the Internet had replaced other formats as the destination for electronic news. Because of this delay, the implications of any possible ruling were already blurred and also greatly magnified. At that time, a district court judge came down in favor of the publishers, ruling that the defendants were protected from claims of copyright infringement under the “collective works” clause of the Copyright Act of 1976. Under the clause, publishers are granted the privilege of “reproducing and distributing” individual works in “any revision of that collective work.” So long as an entire edition of the publication is reproduced, no infringement has taken place.

After a motion for reconsideration was denied, the plaintiffs appealed the case, which came before the court in April. Because its jurisdiction includes the media capital of the world, Second Circuit opinions on intellectual property carry a lot of weight. Writing for the court, Chief Judge Ralph K. Winter rejected the idea that an electronic database could constitute a “revision” of the original periodical; once articles are posted to a behemoth database like Nexis, they can’t possibly still be considered part of the original publication.

Game over— Writers: 1, Publishers: 0— unless the Supreme Court hosts an unlikely rematch.

If only. On its face a boon to freelance writers, in fact the Tasini decision could result in very little real compensation. Most publishers were savvy enough to change their contracts in the wake of the original Tasini suit. “We won’t sign a contract without electronic rights,” says Ann Martin Moore, director of contracts and permissions at Condé Nast. “We’re not particularly worried about [the decision],” says Robin Bierstedt, deputy general counsel at Time Inc., where all-rights contracts are the norm. What also remains to be seen is whether the three-year statute of limitations that pertains to copyright infringements would apply to articles sold before digital rights became an issue. Bruce P. Keller, lead counsel for the publishers, says it “absolutely does.” Tasini argues that because the articles in question are still accessible electronically, their availability constitutes “continuous infringement.” Without further litigation, this question may remain unresolved.

As of now, the publishers indeed owe damages— to six individual writers. In lieu of a class-action suit (a scenario to which neither writers nor publishers look forward), determining which additional writers are owed money and how much they should be paid is a vertiginous prospect. And outside of such a suit, the burden of applying for compensation will be left to the individual writers.

“As a practical matter, I don’t think a lot of writers are going to go back and demand payment for past articles,” says Jim Ledbetter, New York bureau chief for The Industry Standard and a longtime media critic (and former Voice columnist). “I mean, who even has the time? And if you do, you run the risk of alienating your bread and butter.” One alternative, posed by Tasini and the NWU, is widening the scope of the Publications Rights Clearinghouse— an NWU service that currently focuses on obtaining royalties for articles that have been photocopied for academic purposes— to include electronic licensing. In an open letter to 22 publishers issued the Monday following the court ruling, Tasini offered “to negotiate with the publishing community to keep the networks humming.” In the letter, Tasini assured that writers have no interest in undermining “the distribution of magazine and newspaper articles via online networks.”

But publishers are standing their ground, and understandably so. However conciliatory a tone Tasini strikes in his letter, his statements to the press following the court ruling have been oddly, and unnecessarily, belligerent. “We could go into court tomorrow if we wanted and shut down every database,” he told a reporter for the Times. His press release, written in all caps and posted prominently on the NWU Web site, reads like a declaration of war: “We now proceed with . . . relish to the damages phase of our trial.” Even lawyers for the plaintiffs expressed dismay at Tasini’s sword rattling. The NWU represents roughly 5400 writers, a slim minority of working writers in this country; most of NWU’s members do not earn the majority of their income from writing. Writers may be well advised to watch who claims to represent them.

Keller has responded in equally shrill terms. “There’s going to be holes in history,” he says, echoing the doomsday vision portrayed by Times counsel. “If he’s in a position to shut down these databases, then there will be large gaps in the archival record. Freelancers will suffer.”

Wow. And all the writers wanted was a slice of the pie. “The argument has never been whether the works should be disseminated,” says Alice Haemmerli, a dean of graduate legal studies at Columbia and a consultant for the plaintiffs on the Tasini case. “Indeed, most authors would like to see their work disseminated as broadly as possible. This parade of horribles may well be hyperbolic.” One— especially if one is a writer— certainly hopes.

One would also hope for some voluntary concessions from the publishers. Lest anyone forget, publishers do earn revenue from electronic publishing. And in the future, they’re certain to earn much, much more. “One would think that the electronic rights, which exist in perpetuity and extend worldwide, would be compensated at a much greater level than rights for the print edition, which has a shelf life of 24 hours,” says Emily Bass, a lawyer for the plaintiffs and architect of the argument that eventually persuaded the Second Circuit Court. It’s a wonderful thought, much like world peace, but if anything, the all-rights contract could very likely proliferate even further in the wake of Tasini. As Bass also points out, in this country people are free to waive any rights they want. If writers want just compensation for electronic rights, they’ll have to do battle on the contracts as well as the courtrooms.