Don't put my article online!: Extending copyright's new-use doctrine to the electronic publishing media and beyond.

• Author: Rosenzweig, Sidney A.

For last year's words belong to last year's language, And next year's words await another voice.

T.S. Eliot(1)

INTRODUCTION

The methods by which we conduct legal research have evolved dramatically over the last decade.(2) The electronic media,(3) which include online services such as LEXIS and Westlaw as well as compact-disc read-only-memory devices (CD-ROMs) for computers, have changed the ways we as a society gather information.(4) Although these new media provide new methods of information distribution, they also create conflicts over the ownership of the content distributed and represent the source of publishing's "most bitter battle in years."(5) These conflicts stem from a lack of appreciation of future technologies by parties to contracts involving the freelance writer, illustrator, or photographer who informally assigns rights to a book publisher, newspaper, or magazine. Consider, for example, the freelance journalist in 1980 who, over the customary handshake, sold a story to a local newspaper. Then, in 1985, when the first CD-ROM system became available, the newspaper either distributed the article on CD-ROM or licensed another company to do so. How broad was the scope of the 1980 grant from the journalist to the newspaper? Did it encompass the right to exploit then-undeveloped future technologies such as CD-ROM, or did the journalist instead implicitly reserve all future technology rights?

Historically, the issue of ownership of the right to exploit a future medium was limited to the performing arts, including motion pictures, television, and videocassettes. Electronic publishing, however, has forced a careful reexamination of the rights to new uses. This reappraisal has become necessary because the content distributed in these media broadly encompasses not only all of print, but, with the consideration of multimedia applications, nearly any type or form of creative authorship.(6) In the coming years, even newer media technologies will continue to present new problems in copyright licensing.(7)

This Comment examines the historical treatment of new-use assignments and proposes a simpler analysis that encourages the new uses to develop to their full potential. Part I briefly discusses the history and development of electronic media and then examines the conflicts these media have created over the distribution of content. Part II considers the methods by which courts, through nearly a century of common law, have traditionally interpreted contracts in light of new media. Part III examines the traditional common-law analysis and questions the implications of its future application, noting particularly the inconsistent results and utilitarian inefficiencies that are rooted in the existing common law. The alternative treatment proposed in Part III favors judicial interpretations that implicitly grant future technology rights on policy grounds to the producer or publisher, because that party is in the better position to exploit the new medium. Such a policy can, in effect, subsidize infant media until they become commercially viable, without reducing the incentives to authorship that are sought by the Constitution.(8)

Part IV applies the proposal of Part III to electronic media in light of their history, as examined in Part I, and then sets forth the conditions under which courts should interpret agreements to have granted rights to exploit works on electronic media. Part V, an epilogue to this analysis, examines the relationship between parties who today bargain for electronic media rights--rights to an existing, rather than future, technology. Additionally, this Part very briefly considers even newer media that represent the next generation of future technologies. Although the generation of new media examined throughout this Comment might no longer pose new-use issues for contracting parties today (whereas they do indeed pose problems for courts interpreting older contracts that preceded these uses), new media will always be looming, and accompanying them, the relevancy of future technology issues in copyright licensing.

1. THE ELECTRONIC MEDIA

   1. A Historical Overview

      1. Online Services

         Computer databases store packages of information--whether they be newspaper articles, cases, books, or photograph collections--in digital form.(9) Online services, which began to develop in the late 1950s,(10) distribute the database information, making it available to remote terminals via telecommunications networks.(11) By the mid-1960s several dozen information databases existed;(12) by the mid-1970s that number had increased to nearly three hundred,(13) spurred by new developments and the decreasing cost of computers.(14) Full-scale electronic information services became widely available to the American public by 1982,(15) and in 1993 online services had four million subscribers.(16) In 1994, the total number of online computer service users topped 6.3 million.(17) Today, the online information service industry takes in an estimated $13.4 billion per year in revenue,(18) and this robust growth is expected to continue.(19) Most of the nation's major newspapers and magazines now appear in databases or online,(20) and the book publishing industry(21) and the Library of Congress(22) plan to follow this trend.

      2. CD-ROM

         Unlike online services that give a computer user remote access to the database of an information provider, CD-ROM systems provide the user with a full copy of the information itself.(23) Each CD-ROM disc can digitally store 600 million characters of text, 250 thousand typewritten pages, or one nine-volume encyclopedia.(24) Because of their large storage capacity and relatively low cost of production,(25) compact discs allow computer users access to tremendous amounts of information.

         Compact discs, invented in 1980, were launched commercially in 1983 to store music.(26) CD-ROMs are used to store digital data accessible by computer rather than by compact-disc player,(27) and were introduced commercially for this purpose in 1985.(28) In 1994, the number of CD-ROM players grew to 26.9 million units worldwide.(29) The number of consumer titles for CD-ROM software doubled in 1994, and is expected to double again in 1995.(30) The publishing industry has begun to take advantage of the CD-ROM medium as a complementary means for distributing its products.(31) Newspapers intend to begin exploiting the CD-ROM medium as well.(32)

   2. The Current Battle over Distribution Rights in New Media

      These new media are the battleground for freelance writers and publishers, with each group seeking the rights to use existing works on the new media.(33) Although publishers ordinarily have the rights to use preexisting content produced by their staff writers under the work-made-for-hire doctrine,(34) the usage of works by freelancers is subject solely to interpretation of the underlying contract between the two parties.(35) Historically, however, parties have been lax in creating written,(36) let alone unambiguous,(37) contracts. Until recently, magazines and newspapers bought articles "simply on the basis of oral agreements,"(38) and the freelance contracts that did exist did not expressly address the parties' rights in electronic media.(39) Courts must decide, then, whether these agreements conveyed more than the right for the newspaper to print the work once.(40)

      The courts' first look at this issue will occur in Tasini v. New York Times.(41) In Tasini, ten freelance writers filed a suit against five companies: The New York Times Co. and Times Mirror Co., both newspaper publishers; Time Warner, a magazine publisher; Mead Data Central, then owners of the LEXIS/NEXIS database services; and University Microfilms, an issuer of CD-ROMs of periodicals.(42) The writers claim that their work was republished on online computer databases and CD-ROMs without their consent.(43)

      On one side of this dispute are the freelance authors. They consider themselves to be "modernday sweatshop workers" who scrape a living with low salaries and no benefits.(44) They believe that they are entitled to the rights to their works on new media, which would enable them to license the works to the original publisher, if they choose, for reissuance on the electronic media. On the other side are the publishers, who claim that they were granted the rights to use the works when those works were originally conveyed. The publishers deny that electronic rights, or any rights to use a work on a future technology or new medium, must be granted explicitly and separately.(45) Despite their differences, both sides agree on one point: this issue "will have wideranging consequences for the publishing industry no matter which side prevails."(46)

2. A CENTURY OF CONFUSED COMMON LAW: A HISTORICAL EXAMINATION OF NEW-USE

   ASSIGNMENTS

   Over the past century, courts have struggled to develop a common law to interpret, in the absence of explicit contractual provisions, copyright licensing or assignment agreements following the arrival of an unforeseen new medium of expression.(47) Historically, these new media have included silent motion pictures,(48) talking motion pictures,(49) television,(50) and videocassettes.(51) Each arrival created a new property right, namely the right to display the copyrighted work in the new medium,(52) and forced courts to grapple with whether licenses for these new media were granted along with those for the preexisting media.(53)

   Together, these cases establish a common law for contract construction that transcends the contractual language of each case.(54) A coherent common law is necessary because, without mention of future uses in the contracts themselves,(55) or without written contracts at all,(56) courts are confronted with fundamentally similar questions independent of individual contracts. With the exception of several early cases,(57) courts have taken a generally consistent approach to this process of contract interpretation.(58)...