Comments about this article should be sent to mttlr@umich.edu.
{1}The country has gone digital.[1]
In fact, the wide-spread adoption of digital technology has actually promoted
the convergence[2]
of information technology and interactive entertainment media.[3]
Internet web sites, online services, audio music recordings, digital television,
digital motion movie pictures, and electronic mail are all results of the
convergence of digital technology.[4]
High quality, low cost, and efficient digital format have given internet
users, content providers, and even the typical electronics product consumer
the ability to create, edit, view, and communicate information unlike ever
before.[5]
{2}It is remarkable how fast recent trends have driven an increasing number of publishers of magazines, newspapers, and other similar works to port the print version of their works to digital and electronic format in the form of online computer databases and multimedia CD-ROM technologies.[6]Online computer databases and CD-ROM media can be exceptionally profitable ventures for publishers who convert a preexisting print work into a digital product.[7] However, publishers' profits from digital media may be impaired if there is a question as to whether the publisher has satisfactorily secured the copyright to the material making up the digital media. Often, copyright issues in the context of new technologies present parties with novel questions that have uncertain answers. This is due to the development of new technologies outpacing the ability of copyright law to formulate coherent doctrines on important issues such as what is copyrightable, what constitutes copyright infringement, and who owns the copyright in what has been developed.[8] This is particularly troublesome in Cyberspace,[9] where digital transmission of media content has the potential to both evade enforcement efforts relating to copyright interests and undermine the very principles upon which copyright laws are based.[10]
{3}Copyright law affects relations between producers of content and
the writers, artists, computer programmers, and others who actually create
the content or works upon which entertainment products, computer databases
and web sites are based. This has been made evident by a recent Federal
district court decision in New York: Tasini v. New York Times.[11]
The Tasini decision is actually limited to a narrow range of facts,
but the issues that arise from Tasini are as broad as Cyberspace.
Tasini,
if upheld, would have the detrimental effect of curtailing development
of content on web sites, which rely upon articles, graphic images, photos,
and other creative works developed by freelancers off-line who would have
no incentive to cooperatively permit the publication of their works online
or in Cyberspace; in fact, Tasini has already caused significant
opposition to such.[12]
More important, print publications such as traditional newspapers and magazines
who unwittingly rely upon Tasini to force freelance writers into
unfavorable contracts risk pushing an increasing number of valuable talent
into the computer--distributed news business--a business which not only
exalts utilitarian journalism[13]
over traditional news stories, but which also is predicted to take advantage
of the cultural shift being created by digital media by amassing complete
control over news delivery and dislocating most revenue streams for print
newspapers and news weeklies.[14]
{4}Tasini was wrongly decided. Tasini made implicit assumptions about the nature of Lexis-Nexis computer databases and CD-ROM products that were not warranted or supported by the court's findings. The contents of a CD-ROM product or an online database must be accessed by use of program code. Yet, the court never addressed why the fact that these works contained presumably hundreds, if not thousands, of lines of code which do not appear in the printed version of the collective work is insignificant to the determination that the digital products are only revisions of their printed precursors. This fundamental flaw in the court's analysis should render the decision of little application to similar questions in Cyberspace.
{5}In addition, the court's reliance on selection and arrangement factors,
commonly used to analyze the copyright status of factual compilations,
was ill-chosen for a case where, as in Tasini, the compilation is
claimed to be a revised collective work and the compilation exists
in a format that renders its selection or arrangement insignificant to
the user of the work. More important, the principles supported by the decision
are wrong-headed and, if adopted by other courts, could have a devastating
impact upon the future development of digital content.
{6}On August 13, 1997, the United States District Court for the Southern District of New York issued its decision in Tasini v. New York Times Co.[15] The court granted summary judgment in favor of the defendant-publishers, resulting in the dismissal of the plaintiff-freelance writers' case.[16] The court concluded that publishers are entitled to place the contents of their periodicals into electronic databases and CD-ROMs without first securing the permission of the freelance writers whose contributions are included in those periodicals.[17] The court rejected the freelance writers' argument that this practice infringes the copyright each writer holds in his or her individual articles.[18] Instead, the court found the copying of the freelance writers' works by the publishers protected under the "revision" privilege of the "collective works" provision of the Copyright Act of 1976.[19] Thus, the court held that the publishers had not improperly exploited the writers' individual contributions but had permissibly reproduced the articles as part of electronic or digital revisions of the print versions of newspapers and magazines in which those articles first appeared.[20]
{7}The plaintiffs in Tasini were six freelance writers who had sold articles for publication in The New York Times, Newsday, and Sports Illustrated from 1991 to 1993. The New York Times and Newsday are daily newspapers widely circulated to subscribers and newsstands. Sports Illustrated, published by Time, Inc. (Time), is a weekly magazine featuring articles and commentary of particular interest to sports enthusiasts. In addition to circulating hard copy or print versions of their periodicals, the defendant-publishers sell the contents of their publications to University Microfilms Inc. (now called UMI Company (UMI)) and The MEAD Corporation (now called Lexis-Nexis (MEAD))[21] for inclusion in assorted electronic data bases.[22]
{8}UMI produced and distributed two CD-ROM products that were pertinent to the Tasini case. One of these products, identified as "The New York Times OnDisc," was made up of the articles appearing in each issue of The New York Times. The other CD-ROM product, identified as "General Periodicals OnDisc," provided image-based reproductions of The New York Times Book Review and Sunday Magazine.[23]
{9}The publishers provide Lexis-Nexis with a complete copy of computer files which the publishers use during the process of producing the hard copy versions of their periodicals. Coded instructions as to page layout added to these files permit typesetters working for the publishers to produce an electronic copy of the print articles which resembles the print publication. Lexis-Nexis does not copy things such as photographs or advertisements, and the column format of the newspapers is also disregarded. Lexis-Nexis instead uses the electronic files to input the contents of each article on-line along with such information as the author's name and the publication and page in which each article appeared. The articles appearing in The New York Times and Newsday are available soon after they first appear in print, and the articles from an issue of Sports Illustrated appear on-line within a short time of the initial hard copy publication.
{10}Computer users access Lexis-Nexis by using a software package, a network adapter or a modem, and a computer that enables them to access Lexis-Nexis' mainframe computers via a dial-up telephone connection or directly over a private network or the Internet. Once connected, a computer user can enter categories or topics called "libraries." These libraries consist of the articles from either particular publications on different general topics or groups of publications. Computer users can then conduct Boolean searches or other kinds of queries by typing the desired search terms from which the system generates a number of results or hits. These results, consisting of the articles in the database corresponding to the selected search terms, can be viewed either individually or within a citation list. A citation list identifies each article by the publication in which it appeared, by number of words, and by author. When a particular article is selected for full-text view, the entire content of the article appears on screen with a heading providing the same basic information reported within a citation list. Although articles are viewed individually, it is possible, albeit unlikely, for a user to find it useful to enter a search that could generate all of the articles, and only those articles, appearing in a particular periodical on a particular day.
{11}The plaintiffs contended that these electronic reproductions of their articles were improper under the Copyright Act and filed a suit for copyright infringement against the publishers in December 1993.[24] Two of the defendants, Time and Newsday, argued that the plaintiffs had entered into contracts authorizing them to sell the electronic version of the writers' articles.[25] The fulcrum of the publishers' positions, however, rested on the argument that, even in the absence of such agreements, the publishers properly exercised their right under the Copyright Act to produce revised versions of their collective works.[26] The plaintiffs argued that the selection was not preserved by the publishers in developing the electronic products because the databases allow access to individual articles, regardless of whether the whole work is contained in the database. Furthermore, the plaintiffs argued that the articles are stored in the database without relation to any other articles that the initial compilation may have contained, and the database is combined with thousands of other articles from other printed publications.[27] In other words, the publishers did not revise the collective work, but instead created another original work and hence copied the freelance writers' works without authorization.
{12}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.[28] In Tasini, there was no dispute as to whether the freelance writers had retained this copyright; they had. Accordingly, the publishers, as owners of copyright in the collective work only, had acquired the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series. The court had no difficulty in making these determinations since the publishers never contended that they had permissibly created an original collective work.[29] What is not clear, at least as the parties viewed the facts in Tasini, is whether an author's works may be copied, after initial publication as a printed collective work, onto a web page on the internet, into a computer database, or onto a CD-ROM product, as a revised collective work, for retrieval by the general public without prior permission and without infringing the author's copyright.
{13}The freelance writers, however, took the argument further and maintained that the publishers had actually exceeded their narrow privileges of copyright by producing the freelance writers' works as part of a new collective work in the form of a computer database on Lexis-Nexis and as part of various CD-ROM products. In other words, the freelance writers argued that the digital formats of these "new" collective works do not revise the publishers' printed version collective works, but instead exploit the freelance writers' works without permission and without compensation.[30]
{14}The court took a different view. In refuting the plaintiff's arguments, the court noted that, but for the editors' selection of the articles for the initial print compilations, they would not have been included in the databases at all; thus, the selection is in fact preserved.[31] Furthermore, the selection is preserved because an article pulled from the database still retains a reference to the initial periodical the article appeared in and the article's location in that periodical. The court also thought it particularly relevant that the databases also allow users to retain the ability to search for articles that appeared in only one publication, thus removing the issue of the intermingling of articles from different publications.[32]
{15}The court's analysis implicitly favors the protection of substantially revised collective works over the need to carefully assess whether impermissible copying of an original work results from the creation of a new work. Once the court cloaks the digital works within the protective safe-harbor of a "revised collective work," it undertakes little further assessment of the proper scope of a revised work. Its work is done; the defendants' copying of the plaintiffs' works is protected. This lack of assessment by the court is detrimental in its unfair balancing of the publishers' interests against those of the authors. Taken in the worst light, the court's opinion could grant publishers a free pass to create an entirely new collective work out of the works of others for whom the publishers need not pay.[33] Had the court determined that the electronic versions of the collective works amounted to original works, or undertaken cautious analysis of what the proper scope of revision rights in a collective work should be under the facts of Tasini, the underlying principle that copyright law is first and foremost meant to protect original works could have been sustained.
{16}After Tasini, freelance authors may be lawfully uncompensated
by the publishers of digital content who revise the collective work containing
the freelance author's original creation. The result of the district court's
decision is to extend revision rights far beyond its permissible bounds.
Properly viewed, Tasini does not involve the revision right of a
publisher of a printed collective work who revises that work and thereby
produces a copyright-protected computer database.[34]
Rather, it involves the application of an author's copyright in the electronic
version of a work that was clearly protectable when it was in non-digital
form. In this respect, Tasini's failure to find copyright infringement
in the publishers' production of an online database using an author's original
works constitutes a misapplication of the law of copyright.
{17}Under the law of copyright, copyright ownership of a work is presumed to vest in its author, who is the person who translates an idea into a fixed and tangible expression. This rule is axiomatic unless one can establish by a clear writing, signed by the parties, that the actual author intended to transfer her authorship rights. Another elementary principle of copyright law provides that one has only the rights to use a work that he or she acquires from the copyright holder or that are otherwise provided by the provisions of the Copyright Act. In this respect, generally, if an author permits her publisher to publish her work and grants the publisher a license for the print rights to that work, the publisher, on the basis of this limited license, would not be able to lawfully copy the same work as part of an on-line database, a web site in Cyberspace, or some other electronic media such as a CD-ROM; that part of the law is clear.
II. Conveyances of New Technology Rights
{18}Before examining what rights have been granted, it is necessary
to look at the types of conveyances granting rights.[35]
If there is an assignment of all rights, there often is no issue.[36]
The owner of the copyright has conveyed everything he had and retains nothing;
the right to use the work existing in digital format belongs to the grantee.
The significant problem arises when the grantor conveys less than the whole,
or at least contends that he did so, and it becomes necessary to determine
what was granted and what was actually retained.[37]
{19}When dealing with less than the whole bundle of rights in copyright, the copyright holder often relies on some type of instrument of conveyance.[38] The conveyance centers upon exactly what rights have been granted and specifically enumerated in the license or instrument of conveyance. The grant is limited to precisely those rights. What is not enumerated is not granted.[39] In one common form of conveyance, the copyright is assigned with a reservation of rights to the author or grantor. What has not been explicitly reserved is deemed granted. A single instrument or contract could make use of both types of conveyances spelling out what has been granted and what has been reserved.[40] Consequently, when a new technology is developed and that technology creates a new medium for copying a pre-existing work, the issue in Tasini arises; namely, when a right has been granted to exploit a copyrighted work, and a new use is then discovered for the work, who has the right to exploit the new use--the grantor or the grantee? Does the new use fall within the reserved rights or the granted rights?
{20}The issue can be further complicated or, in some cases, simplified
by the existence of a "future technology clause." This is a clause in the
contract granting the licensee the right to exploit the work in "all media
now known or hereafter conceived or created." The complication arises when
the judge or lawyer seeks to interpret the very language of the grant and
determine to what the future technology clause extends. An all encompassing
grant in one provision might be limited either by the context in which
it appears, by other provisions in the same contracts, or by other subsequent
related contracts. The outcome will depend on how narrow or broad a reading
is given to the actual words of the grant.
{21}Although the Tasini court had little trouble finding that the publishers had only limited rights in the articles they had published,[41] the court was, nonetheless, convinced that those limited rights were extensive enough so that the publishers had not improperly exploited the works of the authors by publishing the electronic versions of the printed works. The court held that the legislative history of the Copyright Act of 1976 supports its finding that the allowance of "revisions" to a collective work should be read broadly, only limited by a simple inquiry into whether the collective work is still a recognizable version of the initial collective work so as to still be considered only a revision. This limited inquiry by the court in Tasini resulted in the publishers prevailing over the authors.[42]
{22}Although Tasini's holding is ostensibly limited to non-fiction essays published as part of a collective work, its application, if upheld, will be far beyond its facts. The court's departure from the basic principles of copyright law is not significant merely because it may have cut a new swath of law from precedents that were poorly stitched together to begin with, but Tasini is also significant because, if allowed to stand as the law of copyright, it will have an extraordinary effect on Cyberspace and multimedia entertainment. On-line databases, multimedia technologies and online entertainment-based interactive software applications are proliferating. Often, these new digital products contain works that were formerly part of another collective work in print form or some form other than electronic.
{23}In Cyberspace, the works of many authors can be found on web sites
owned or operated by publishers of print media who neither obtained permission
nor compensated the authors for use of the works. More interesting, vast
databases exist in Cyberspace in the form of so-called indexes and "search-engines,"
which catalog and record the location of the contents of almost every web
page. One novel question with regard to these types of databases concerns
whether these large databases improperly exploit the works of others through
the manner in which the search-engine copies or reproduces the contents
of other web pages without explicit permission from the web page author.[43]
{24}Notably, the Tasini court recognized that the effect of its
holding essentially divested valuable copyright ownership from the creator
of the work and posited that value fully with the electronic publisher.
This ruling, consequently, could affect the intellectual property rights
of a large number of other creators of original works whose works, after
initial publication, subsequently appear on the Internet as part of an
E-zine, an online searchable index, a web site-computer database, a virtual
gallery or museum in Cyberspace, or some other form of multimedia-entertainment
or CD-ROM product.
{25}What follows is an examination of whether, when analyzed against the complex backdrop of the dual purposes of granting an author exclusive and beneficial copyright protection, the Tasini decision is a satisfying one; this paper will show that it is not. Often, when copyright infringement is alleged, courts must balance the constitutionally competing aims of promoting human creativity and original expression through strict enforcement of the copyright law with ensuring that broad copyright protections do not unfairly or unnecessarily prevent the development of our knowledge base--particularly, the nation's development of practical uses of technology and information. This kind of balancing, however, does not seem evident in the court's analysis in Tasini. The court, ostensibly, balanced the interests of parties each asserting copyright interests, none of whom explicitly favored relaxed copyright enforcement for the sake of the development of knowledge. Nonetheless, this tension still existed in Tasini. It is usually assumed that by failing to protect the copyright interests of authors, courts may almost implacably erode the interests of authors in creating original works. In this respect, the Tasini court may have balanced the rights of publishers so favorably as to have unwittingly subverted the constitutional aim of copyright law--to promote human creativity and original expression.
III. The Scope of a Revised Collective Work
{26}The Tasini court had to address the difficult issue of determining the upper limits for revising a preexisting collective work. The Copyright Act contained no answer and no case law had ever addressed this narrow question. The court needed to assess whether the principles underlying the Copyright Act supported the view that a digital collective work (in the form of an online database or CD-ROM) was so substantially different from a printed collective work (in the form of a newspaper or magazine) that the digital work could not be deemed a mere revision, but instead constituted an original work that infringed the rights of individual authors. With this task in sight, the court erred by borrowing the "selection and arrangement" doctrine, developed to set the limits of permissible revising and assess whether a factual compilation had the requisite originality to warrant copyright protection.
{27}The Tasini court had to grapple with the question of whether the publishers, themselves, had created an original work. [44]But, under the pertinent copyright analysis, the court had to find that the collective work was not original in order to conclude that the electronic versions of the initial collective works were revisions for which copyright protection could be provided to the publishers. In other words, the court's analysis ultimately promotes the production of substantially revised collective works to the detriment of the author's works on which the so-called revised collective works are based.
{28}The initial inquiry before the court was whether the application of revision rights to a pre-existing compilation altered by the combination of statements or instructions of a computer program is proper under copyright doctrine. Two erroneous assumptions underlie the argument that the publisher-defendants in Tasini had the right to use or create an independently-written computer program that produced, in electronic form, the same compilation that appeared in their print publications. First, the court implicitly drew an artificial and improper distinction between the computer program that runs the database and what the program, along with the data, produces when actually used by a database user. In addition, the court failed to recognize that an on-line computer database that is continuously updated, such as the Lexis-Nexis database, should not be analyzed in accordance with its selection and arrangement of data elements when much of the selection and arrangement of data elements is subject to change as the database expands or contracts. The district court erred in its analysis of the online computer database in Tasini because it failed to consider the database in its entirety. This failure caused the court to draw conclusions that were both technologically incorrect and logically unfounded.
{29}The court's opinion extended revision rights to the CD-ROM products and the online computer database as compilations or collective works. The court, without explanation, also drew an improper distinction between the apparent structure of the elements or data in the database and the computer program used to run the database.[45] The court's analysis demonstrates that it evaluated whether the CD-ROM products and the online database were revisions of printed works by focusing solely on the content or elements of the collective works. While such surgical precision may be justified in instances where the court must determine who had which copyright, the issue before the court in Tasini neither required nor warranted the court's unusual approach. Indeed, after recognizing that the issue before it, in part, was to determine whether the new technological format of the products (i.e. the printed collective works or newspapers and magazines now in digital format) constituted a revised product or an original product, the court never reached this issue in its analysis.
{30}Instead, the court started its analysis with the faulty assumption that the digital product included little more than digitized text that could be viewed on a computer screen. The court did not consider what weight should be given to the fact that the so-called revised products contain thousands of lines of computer code that must be executed on the machine that contains the online database or CD-ROM product.[46] Nor did the court evaluate the contents of the Nexis database other than to find the selection and arrangement of the print articles still intact.[47] The court also never explicitly acknowledged the fact that the online database on Nexis contains thousands of articles never selected by the publishers of The New York Times or Newsday, nor how this fact alone could render the selection and arrangement criteria inapposite to a database case of the sort before the court. In these respects, the Tasini court failed to adhere to the doctrines reflected in the Copyright Act and case law interpreting it.
{31}Under the United States Copyright Act, a computer program is a set
of statements or instructions used directly or indirectly in a computer
in order to bring about a certain result.[48]
Unless the certain result effected by a program is independently protected
under copyright law, anyone has the right to produce independent code bringing
about an identical result. In fact, to the extent that a specific piece
of code is the only way to bring about some aspect of this certain result,
one of only a few practical ways of doing so, or an obvious or standard
way of doing so from the point of view of an experienced programmer, that
specific piece of code is not protected.[49]
A court would therefore be mistaken to simply assume that the database
code in Tasini was protectable code owned by someone other than
the publishers, and to ignore, for the purpose of analysis, the computer
code that existed as part of the computer database.[50]
The copyrightability of aspects of the computer database code should have
no place in deciding whether the computer database is a revised version
of a printed collective work.[51]
{32}It is widely recognized, and not questioned in the Tasini
case, that different computer programs can generate identical outputs.
Therefore, even the identity of unprotected output does not establish infringement
of the underlying program. As for computer databases, a database is created
as a result of the use of [1] computer hardware, [2] software, [3] compilation
code, and [4] data or content.[52]
The interaction of these four elements ostensibly constitutes a useable
computer database.[53]
{33}In perhaps its purest form, the entire digitized database is nothing more than machine language, binary zeros and ones, which act as electronic on/off switches. These switches ultimately respond to computer instructions that implement an algorithm defining how the software program should translate user queries and display the results. The data contained in the database could be factual material such as airline reservations or social security numbers, or the data could be a great deal more elaborate and contain tables of records of text files that essentially serve as digital copies of articles that initially appeared in a newspaper, book, or magazine.
{34}The conclusion that what a program does, and therefore its appearance
to the outside world when viewed solely through input and output devices,
is not protected by the copyright in the program comports with well over
100 years of copyright case law. The scope of such protection is circumscribed
by all of copyright's traditional limiting doctrines and is not affected
by the 1980 amendments to the Copyright Act which recognize the protectability
of computer programs. Despite the similar approaches of patent and copyright
law, both of which strike a balance between providing an incentive for
the creation of works and ensuring that the public and later creators can
enjoy and build upon an expanding public domain, they are distinct components
of a coherent scheme of intellectual property protection.[54]
{35}Even if a court were to approach the issue of copyright protection for a computer database by viewing the screen or print output of a query to a computer database as distinct from the underlying program running the database - as the Tasini court presumably did - the fundamental nature of this technology should caution against reliance upon such an approach. It is clear that what a computer database does when it causes a computer screen to display an article or some other search result is inextricably tied to the computer database software program's structure, database elements, and machine code for purposes of database copyright analysis. Indeed, the court conceded that the analysis it had adopted would almost inevitably lead to the same result; namely concluding that an online database is just a revised copy of a print newspaper or magazine. Unfortunately, the Tasini court overlooked the fact that the basic technology of a computer database cuts against its finding that the production of a computer database is merely a revision of a printed collective work under copyright law. Perhaps the court made this error because it mistakenly relied upon an analysis of collective works drawn from case law regarding factual compilations instead of applying copyright doctrine more appropriately drawn from cases involving software applications or multimedia video games. Whatever the reason for the court's unusual detour, the application of case law from factual compilations is a wrong turn for the information superhighway.
{36}Although basic copyright law requires that outputs of computer programs be evaluated on the basis of their own merits as expressive works of authorship and not any copyright in the program that produces them, Tasini provides no basis for determining how such a distinction should be drawn in the case of revisions to collective works. Does it matter that a computer database involves the manipulation of data by an external software program when a court is reviewing whether the collective work so substantially departs from the print version that the digital format should be considered an original work? This question is left unanswered by Tasini, yet the answer is pivotal in assessing whether the revision rights granted by the court are excessive. An inequity seems to lurk in the idea that a collective work can be altered so dramatically as to make a product with uses far exceeding its printed counterpart, yet the alteration is so slight that the elements of the revised collective work may be used without compensation. This, however, is the proposition that Tasini stands for.
{37}The court repeatedly referred to the selection and arrangement in
elements it found to be protected:
{38}Frequently, multi-periodical databases such as Nexis are searched for specific topics within a large collection of works and are not used because of a desire to take advantage of an editor's particular selection of articles. The removal of context, coupled with the frequent compilation of multiple periodicals into one database for search purposes and the different audience for the original and the electronic products, makes it disingenuous to say that a Nexis database is merely a revision of The New York Times.
{39}In general, the question of whether and how databases should be
protected by law has never been easy, as it necessarily involves finding
a balance between two potentially conflicting societal goals: the goal
of providing adequate incentives for their continued production and the
goal of ensuring public access to the information they contain. At different
points in time, in different societies, that balance has been struck in
different ways. The major landmark among these changes was the U.S. Supreme
Court's 1991 decision in Feist Publications v. Rural Telephone Service
Co.[57]
As a result of the explosive growth of the Internet and the rapid developments
in the technologies for collecting, organizing, reproducing, and disseminating
information, copyright law is being viewed more as a tool for the benefit
of the public. Since information wants to be free, as many in Cyberspace
believe, copyright law should strive to make the information contained
in protected works of authorship freely available on the Internet. Of course,
this outcome would not directly serve any of the interests in Tasini.
However, if all computer databases were subject to exceptionally narrow
copyright protection, could this be a way out of Tasini?
{40}In the terminology of copyright law, a database is a "compilation":
"a work formed by the collection and assembling of preexisting materials
or of data."[58]
Compilations constitute one of the oldest forms of authorship protected
under U.S. law, dating back to the eighteenth century.[59]
Compilations were protected as "books" under the first federal copyright
statute.[60]
{41}The earliest compilation cases that discussed the basis for copyright
protection identified the compiler's effort - "his own expense, or skill,
or labor, or money"[61]
- as the critical contribution justifying protection.[62]
These cases, involving works ranging from law reports and legal encyclopedias
to compilations of war records, emphasized both the compilers' effort and
the copiers' "unfair use of the copyrighted work, in order to save themselves
the time and labor of original investigation."[63]
Contemporary treatises echoed this approach.[64]
The evolving doctrine of originality was applied by some courts in compilation
cases, particularly cases involving compilations of textual materials such
as law books. These cases identified the author's judgment in selecting
and arranging materials as the critical contribution which justified protection.[65]
This approach coexisted with, rather than supplanted, sweat of the brow
cases. Sweat of the brow was applied to cases involving purely factual
compilations, such as catalogs and directories. Sometimes the two approaches
appeared to be melded together in a single case, with the court focusing
on the "labor" and "skill" contributed by the author.[66]
With very few exceptions, courts drew on these approaches to support the
conclusion that a particular compilation was protectable, rather than to
deny protection.
{42}The Supreme Court struck down the "sweat of the brow" doctrine in Feist Publications v. Rural Telephone Service Co.[67] In finding that a white pages telephone directory lacked copyright-protection, the Court held that the sole basis for protection under U.S. copyright law is creative originality.[68]
{43}Rural Telephone Service Co. (Rural), was a local telephone company that produced a white-pages telephone directory covering its service area.[69] Feist Publications (Feist), the defendant, published a directory covering multiple service areas. After Feist sought, and was refused, a license to the listings in Rural's directory, it copied the listings without authorization.[70] The district court found Feist liable for infringement.[71]
{44}In Feist, the Supreme Court held that "[o]riginality is a
constitutional requirement."[72]
Citing nineteenth-century case law, the Court derived this requirement
from the Constitutional terms "Writings" and "Authors" in the grant of
authority to Congress to enact copyright laws.[73]
Subsequent cases have followed the Supreme Court's reasoning in Feist.
In Key Publications, Inc. v. Chinatown Today Publ'g Enter. Inc.,[74]
the Second Circuit sustained the copyrightability of the yellow pages of
a telephone directory for New York's Chinese-American community. The court
found that the selection of entries in Key's directory was original.[75]
In addition, the arrangement of the directory into categories (e.g., Accountants,
Bridal Shops, Shoe Stores, Bean Curd & Bean Sprout Shops) was, when
"viewed in the aggregate," original, because it "entailed the de minimis
thought needed to withstand the originality requirement."[76]
{45}In two post-Feist cases, the Eleventh Circuit found that the copying of significant portions of copyrightable compilations was not infringement because the material copied did not rise to the level of creative authorship. In Bellsouth Adver. & Publ'g Corp. v. Donnelley Information Publ'g, Inc. ("BAPCO"),[77] the Eleventh Circuit held that the defendant's entry into a computer of all of the names, addresses and telephone numbers of advertisers in the plaintiff's yellow pages telephone directory, together with business type and type of advertisement, did not infringe.[78] The court focused on the elements of selection, coordination and arrangement that the plaintiff claimed were infringed and found each to be either unprotectable or not copied.[79] For example, the plaintiff claimed (and the district court held) that it selected the listings by determining the geographic scope of the directory, establishing a closing date for changes, and limiting listings to subscribers to its business telephone service, as well as through a variety of marketing techniques. The court found that these elements did not meet the level of creativity required by Feist.[80]
{46}Tasini borrowed the Feist analysis on originality
and applied it to the Nexis online database and CD-ROM products to determine
whether the databases at issue were revisions of the print version
newspaper and magazine publications. However, Tasini relied upon
the Feist criteria without first determining whether Feist
was really applicable to the computer databases. In fact, Feist
differs from Tasini in many relevant respects. Feist did
not involve a computer database; it involved a printed version of a telephone
directory listing. Nor did Feist involve a collective work made
up of components which, themselves, were copyrightable. Feist involved
a factual compilation wherein the facts, as its components, were not subject
to copyright protection. This is a critical distinction. The freelance
writers' complaint against the publishers rests on the fact that the elements
of the publishers' computer database were protected by copyright. More
importantly, since Feist did not involve a collective work that
was a computer database, Tasini's reliance on Feist's selection
and arrangement factors was ill-chosen. These factors seem to be particularly
irrelevant in instances where the compilation is claimed to be a
revised collective work and the compilation exists in a format that
renders the selection or arrangement of its elements insignificant to the
user of the work.
IV. Freelance Writing Contract Practices in
the Publishing Industry
{47}Historically, freelance writers and publishers have been lax in
creating written, let alone unambiguous, contracts.[81]
Until recently, magazines and newspapers bought articles simply on the
basis of oral agreements, and the freelance contracts that did exist did
not expressly address the parties' rights in electronic media.[82]
Courts must thus decide whether these agreements convey more than the right
for the newspaper to print the work once.[83]
The interpretation of copyright assignments for content published as
part of a collective work differs somewhat from that of other types of
assignments. Section 201(c) of the 1976 Act provides:
On its face, the statute suggests that freelance writers and photographers for magazines and newspapers who did not sign contracts are presumed to have granted only first North American serial rights, rendering the discussion moot as to journalists and photographers but not book authors.[85]
{48}The first significant series of cases examining the scope of a grant of rights after the advent of a new technology questioned whether a grant of dramatic rights included motion picture rights. The court decisions were far from uniform and no clear pattern emerged. While some courts held that a grant of dramatic rights (i.e., a right to what are commonly thought of as live plays on stage) included motion picture rights,[86] others held that those rights were excluded.[87]
{49}Rooney v. Columbia Pictures,[88] the first major case in recent times, concerned the use of a new technology to record films or motion moving pictures on a videocassette recorder. This case involved the actor Mickey Rooney.[89] Rooney claimed that a group of film companies did not have the right to use his pre-1960 movies in "alternative markets" - "commercial television, pay television and audiovisual device markets."[90] The court quoted extensively from a lengthy series of contracts and found that "it is difficult to conceive of contracts which more explicitly and certainly provide the answer to the major issue before this Court . . . . These agreements make clear that the rights to exhibit Rooney's pre-1960 films in the alternative markets are held by defendants and not by Rooney."[91] The Rooney court found that "where . . . a party has acquired a contractual right which may fairly be read as extending to media developed thereafter, the other party can hardly avoid the contract's application to such media by establishing that the precise nature of the advance was not anticipated."[92]
{50}The Ninth Circuit, in Cohen v. Paramount Pictures Corp.,[93] announced that, "[t]his case involves a novel issue of copyright law: whether a license conferring the right to exhibit a film 'by means of television' includes the right to distribute videocassettes of the film. We hold it does not."[94] The central controversy was a right granted by Cohen in 1969 to use a musical composition in the movie Medium Cool. The 1969 contract granted the licensee the "authority . . . to record, in any manner, medium, form or language, the words and music of the musical composition . . . with ['Medium Cool']."[95]
{51}Not only did the court find videocassette viewing of a markedly
different nature not to be equated with exhibition by means of television,
but it also looked to the state of knowledge of the parties: "Perhaps the
primary reason why . . . the license cannot be construed as including the
distribution of videocassettes for home viewing is that VCRs for home use
were not invented or known in 1969, when the license was executed."[96]
In dictum, the court added that "the holder of the license should not now
'reap the entire windfall' associated with the new medium."[97]
{52}In sum, courts have consistently acknowledged that the purpose of U.S. copyright law is to stimulate the production of creative works in order to get them before the public. The monopoly privileges that Congress may authorize are neither unlimited nor primarily designed to provide a special private benefit. Rather, the limited grant is a means by which an important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.[98]
{53}Frequently, the actual analysis appears to be based upon the judge's own view of technology, whether or not he is aware of its influence. A judge's own view of the new technology will often influence the determination of whether he finds the new use included in the description of the original grant of rights. In Rooney, the court found no significant difference between television and videocassette and found the new use included.[99] Similarly, in Platinum Record Co., Inc. v. Lucasfilm, Ltd.,[100] the court equated home video and television and likewise found the new use included in the original grant.
{54}On the other hand, other courts have had a radically different view
of the same technology and have reached totally different results. The
court in Cohen v. Paramount Pictures Corp.[101]found
that "exhibition of a film on television differs fundamentally from exhibition
by means of a videocassette recorder"[102]
and that "television and videocassette display . . . have very little in
common."[103]
Consequently, the court found the new use not included in the grant. In
these cases, what courts are really being called upon to decide is whether
the grantor or grantee should be allowed to claim the benefits of the unanticipated
windfall made possible by the invention of the new technology.
{55}The development of case law in this area has been so scattered in its formation that almost every time a new technology is invented, the question arises whether that new use is included in a preexisting copyright license or contract. Historically, courts began struggling with this problem when motion pictures were invented and licenses had been issued for dramatic rights. Yet, despite revisions to the Copyright Act since that time, courts are apparently continuing to face difficult choices when resolving copyright license disputes involving the use of newly developed technology.
{56}As technological developments like the Internet continue to rapidly expand the potential scope of intellectual property, courts will need to be more vigilant in understanding technology and how technological advances may dramatically affect the manner in which people receive compensation for services they perform or products they produce.[104] In addition, the law will need a more consistent framework to take on the challenges that the rapid proliferation of new technology is guaranteed to impose. More immediately, courts will need to make greater efforts to ensure that state contract law does not have the unintended effect of dislodging the important and fundamental principles supported by Federal copyright law.[105]
{57}More importantly, rather than leave all of these important issues
for courts to resolve, Congress must revise the Copyright Act to properly
guarantee that both fairness and predictability remain the basis for ensuring
that the basic purposes of American copyright law are furthered. One possible
solution is a statutory provision setting forth the conditions which warrant
providing for royalties to the grantor. This could satisfy the need for
a framework that applies to developments of technologies heretofore unknown
or unforeseeable by parties involved in copyright transactions.
{58}Given that one purpose of copyright is to make creative works available to the public, it is imperative that it be economically worthwhile to all parties. As the Supreme Court reiterated in Sony Corp. v. Universal City Studios, Inc.,[106] the copyright law is intended to motivate creativity and to allow public access to the products of that creativity.[107] Any viable solution must satisfy these twin objectives. Any threat of closing down a potential future revenue stream can only be a disincentive to all parties, grantors and grantees alike, in an already risky and costly business, and it is the public which will ultimately be deprived of new works. In this respect, Tasini does not serve the practical realities of copyright.
{59}Electronic media has profoundly and perhaps permanently changed the conventional means by which information is distributed. These changes have created a new bundle of rights whose ownership is uncertain. Even in contracts drafted with great care, it is difficult to determine whether new-use rights are meant to have been transferred or retained, unless all rights are granted[108] New-use rights cannot be defined with precision at the time of contract, because, by definition, they do not exist until some point after the agreement has been consummated. This problem is only exacerbated in the publishing industry where crude agreements, which until recently had been sufficient, are prevalent. New-use rights are unlike other types of contractual rights because they do not form any part of the mutual intent between contracting parties. As a result, they represent a windfall in that neither party, without more than the agreement, has a greater claim to those rights under current law. Consequently, contract law is inadequate as a predictable framework for resolution of Tasini disputes. Indeed, after Tasini, freelance writers have little or no bargaining power over electronic rights when faced with similar factual circumstances.[109] Essentially, in a Tasini dispute, electronic rights are not even on the negotiating table for the typical freelance writer. While this result is clearly helpful for publishers, it is not useful as a general framework that all parties can rely upon with some degree of certainty. In negotiating various forms of digital rights, reliance upon Tasini may prove unwarranted since, instead of relying upon an analytical framework or broad principles of copyright law, the Tasini opinion ultimately rests on its peculiar facts. It is unclear whether a Tasini dispute should rightfully be resolved under Tasini if the dispute involves publishing freelance articles on an Internet web site instead of Lexis-Nexis or making the freelance articles available for downloading (but not viewing) from an online service or the Internet.[110]
{60}With regard to computer databases, the existing law should have aided the Tasini court, yet it did not.[111] When analyzed against the complex backdrop of copyright law, the Tasini decision is not a satisfying one. Often, when copyright infringement is alleged, courts must balance the competing aims of promoting human creativity and original expression through strict enforcement of the copyright law and ensuring that broad copyright protections do not unfairly or unnecessarily prevent the development of our knowledge-base (including the development of practical uses of technology and information). This kind of balancing, however, does not seem evident in the analysis in Tasini. By favoring the rights of publishers, the Tasini court subverted the constitutional aim of promoting human creativity and original expression.[112] The decision essentially exalted revision over original expression.
{61}Tasini is significant because, if allowed to stand as the
law of copyright, it could have an extraordinary effect on Cyberspace and
multimedia entertainment. By any measure, the impact of the explosive growth
of Cyberspace is difficult to exaggerate.[113]
Online databases, multimedia technologies, and online entertainment-based
interactive software applications are proliferating. Often, these new digital
products contain works that were formerly part of another collective work
in print or some other non-electronic form. After Tasini, freelance
authors may be lawfully uncompensated by the publishers of digital content
who revise the collective work containing the freelance author's original
creation. This result could inevitably frustrate future convergence of
pre-existing print content with a digital counterpart.[114]
Copyright should not affect relations between producers of content and
the writers, artists, computer programmers, and others who actually create
the content or elements of collective works by stripping away any copyright
interest held by a freelancer in a digital product produced by revising
the preexisting version of the collective work. Will producers and publishers
of content take advantage of the black hole provided by Tasini and
freely port the print works of others to digital format in Cyberspace?
If so, what repercussions may follow, and is this the direction or trend
we want to support?[115]
The potential answers to these questions demonstrate why the Tasini
court should have found that a publisher's production of an online or CD-ROM-based
computer database using an author's original works constitutes copyright
infringement by the publisher under the law of copyright.