Interpreting the Copyright Act's Section 201(c) Revision Privilege with Respect to Electronic Media.

• Author: Meitus, Robert

1. INTRODUCTION

   "Both the language and the legislative history of section 201(c) suggest that when in doubt, courts should construe the rights of publishers narrowly rather than broadly in relation to those of authors.... [O]ne must bear in mind that Congress passed the section to enlarge the rights of authors."(1)

   At the dawn of a new millennium, the United States is in the midst of unprecedented technological change in which our capacity to produce, transmit, and receive information increases daily.(2) The electronic media--(3) including compact disc read-only-memory devices (CD-ROMs) and online services such as those provided by LEXIS/NEXIS (NEXIS) and Westlaw--have redefined the ways in which consumers acquire this information. As communicative technology grows, conflicts over ownership of creative content are inevitable, giving rise to the need to reevaluate the rules of ownership of intellectual property in the modern environment of electronic publishing.

   For more than a decade, publishers have increasingly made the contents of their newspapers and magazines available through electronic media. However, only recently have freelance(4) authors legally challenged these publishers for allegedly infringing their copyrights in underlying works of authorship.(5) In the absence of express agreements to the contrary, the authors maintain that section 201(c) of the Copyright Act of 1976 (1976 Act)(6) gives publishers only the limited privilege of publishing an article as part of a "particular collective work, any revision of that collective work, and any later collective work in the same series"(7) and that republication in electronic media does not fit within this definition. Publishers disagree and seek a more liberal interpretation of section 201(c). At its core, the issue appears quite simple: What is the definition of "revision," and does it include certain formats of electronic database publishing? Closely related to this issue is another important question: Do certain electronic formats, whether revisions or not, infringe an author's right of reproduction through providing for and encouraging reprinting of individually copyrighted articles?

   This Note examines the existing bases for interpreting the section 201(c) revision privilege with respect to electronic media, including the Act's plain language, legislative intent, and broader issues of public policy in the realm of copyright. Part II discusses the body of copyright law pertinent to this inquiry, beginning with a succinct and general overview. Part III turns to the landmark case, Tasini v. New York Times,(8) which is the first and only case to interpret section 201(c) with respect to electronic media. In addition, Part III examines the reasoning of both the district court, which held in favor of the publisher defendants, and the Second Circuit Court of Appeals, which recently reversed the decision. Part IV briefly analyzes a district court opinion out of the Second Circuit, Ryan v. Carl Corp.,(9) which is the only other case addressing section 201(c) and the electronic media, albeit in dicta. Part V explores related case law dealing with "new media" in licensing agreements, which offers further insight into the role of public policy in new technology licensing cases. Part VI examines copyright clearinghouses as necessary and effective tools for the administration of collective licensing of freelance articles. Part VII concludes that unauthorized republication of freelance articles in some new media formats, including NEXIS and certain CD-ROMs, infringes on an author's reproduction rights. Such republication is authorized under section 201 (c) only if it retains the publisher's contribution to the collective work, is inherently recognizable as a version of that collective work, and does not sever the individual article from the collective work. This Note ultimately suggests a revision analysis which would effectively support the policy goals of copyright incentive of both the 1976 Act and the U.S. Constitution.

   Initially, one must ask why this inquiry is necessary in light of the rapid movement toward unambiguous publishing contracts defining rights of future publication, electronic or otherwise.(10) The answer is twofold. First, electronic rights for a vast body of freelance articles written in the past are at stake and the courts will ultimately decide whether writers or publishers will receive the windfall represented by new technologies. For example, a freelance article appearing in a 1965 edition of Time Magazine can now be retrieved online through NEXIS, an arrangement profiting both Time Magazine and Mead Data Central (Mead)--owners of NEXIS--but not the author. If publishers win the legal battle, their industry will reap a windfall from electronic republication rights. Second, the courts' interpretations of section 201(c) establish a foundation upon which bargaining will take place well into the future. The contractual bargaining favored by the 1976 Act(11) began in earnest following the Tasini v. New York Times (Tasini I)(12) decision in 1997. If the courts continue to hold, as did the Second Circuit Court of Appeals in Tasini v. New York Times (Tasini II),(13) that Congress intended certain electronic publishing rights to attach to primary copyright holders, authors' rights will be strengthened. But given that publishers wield more bargaining power than do most freelance writers, the effect of such decisions may prove primarily a moral, rather than economic, victory for authors' future rights.

2. PLACING THE ISSUE IN CONTEXT

   1. The Historical Foundation of Copyright Law

      The U.S. Constitution authorizes Congress to pass copyright and patent legislation "to promote the [p]rogress of [s]cience and the useful [a]rts, by securing for limited [t]imes, to [a]uthors and [i]nventors, the exclusive [r]ight to their respective [w]ritings and [d]iscoveries."(14) The Constitutional Convention adopted this clause in 1787 without debate and, consequently, there is little documentary evidence of the Framers' intent with regard to its language and scope.(15) Scholars often refer to the following comment by James Madison in The Federalist when seeking to shed light on this issue:

      The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of individuals.(1) Based on the constitutional language and consistent with Madison's commentary, the Copyright Clause clearly promotes the dissemination of knowledge to enhance the public welfare through an economic incentive of limited monopoly given to the author.(17) Indeed, much later, in the 1954 Mazer v. Stein(18) opinion, the Supreme Court explained the rationale underlying the Copyright Clause as follows: "The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance the public welfare through the talents of authors and inventors in `[s]cience and the [u]seful [a]rts."'(19)

      On this pretense, the first federal Copyright Act of 1790 (1790 Act) provided protection to the author or his assignees of any map, chart, or book for fourteen years with a renewal period of equal length.(20) General revisions took place in 1831 and 1870, but it was not until 1909 that Congress overhauled the 1790 Act to meet the challenges of the modern era. The Copyright Act of 1909 (1909 Act), the result of several years of extensive labor and the input of a multitude of governmental and private interests, ultimately lacked clarity and coherence, making it difficult to administer.(21) Nevertheless, Congress achieved several notable improvements: expanding copyrightable subject matter to include "all the writings of an author," splitting duration into an initial twenty-eight year term with a second twenty-eight year renewal,(22) and changing the trigger for federal copyright to publication rather than registration.

   2. Current Law Under the Copyright Act of 1976

      Many decades of technological, social, and economic changes forced Congress to amend the 1909 Act in a piecemeal fashion. But in 1955, Congress authorized comprehensive hearings and reports that culminated--nearly twenty years later--in the 1976 Act.(23) Among other extensive changes, the 1976 Act: (1) provides protection to all works "fixed in a tangible medium of expression" without requiring the work to be published;(24) (2) extends the duration of protection to the life of the author plus seventy years;(25) (3) allows for copyright divisibility through licensing or assignment of a copyright "in whole or in part;(26) and (4) guarantees the five exclusive rights embodied in section 106: rights of reproduction, adaptation, public distribution, performance, and display.(27)

      Section 102(a) of the 1976 Act outlines an "illustrative" list of eight categories of copyrightable subject matter which Congress intended to be liberally interpreted:(28) literary works; musical works; dramatic works; pantomimes and choreographic works; pictorial, graphic and sculptural works; motion pictures and other audiovisual works; sound recordings; and architectural works.(29)

      Section 102(a) also enunciates the threshold copyright requirements of fixation and originality when it states: "Copyright protection subsists ... in original works of authorship fixed in any tangible medium of expression ....,"(30) Fixation is clearly defined in the 1976 Act as an "embodiment in a copy or phonorecord" by the author and "sufficiently permanent to permit it to be perceived, reproduced, or otherwise communicated for a period of more than a transitory duration."(31) Originality, on the other hand, is not defined by the Act, but case law has...