INTERNET LAW - Privileged Revisions v. Copyrights on Works Republished in Databases and other Electronic Forms

Martha L. Arias, Immigration and Internet Law Attorney, Miami; IBLS Director
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The transfer of collective copyrighted works from original prints to databases or electronic forms is redefining copyright principles and laws. Copyright holders are filing copyright infringement law suits against publishers who transfer imprint collective works to databases, CD ROMs, and other electronic forms. The question is whether these new publishing forms constitute privileged revisions under US 17 U.S.C.S. § 201(c) or whether they infringe upon the authors' copyrights.

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The transfer of collective copyrighted works from original prints to databases or electronic forms is redefining copyright principles and laws.  Copyright holders are filing copyright infringement law suits against publishers who transfer imprint collective works to databases, CD ROMs, and other electronic forms.  The question is whether these new publishing forms constitute privileged revisions under US 17 U.S.C.S. § 201(c) or whether they infringe upon  the authors' copyrights.   

The US Supreme Court answered this question in the case of N.Y. Times Co. v. Tasini and Federal Courts have followed this precedent decision since 2001.  In Tasini, a group of freelance writers produced articles for print publishers who incorporated them in periodicals. Later, an electronic database company entered into an agreement with the print publishers to copy the articles from the periodicals, including the freelances" articles, and place them in an electronic database from which articles were accessed individually by title, subject matter, keywords, and other search terms. The electronic database contained thousands of articles from various collective works from several companies accessed as individual articles from CD ROMS or the publishers' central discs.  The articles in the database were "image based" as opposed to "text based;"in other words, they were microforms taken directly from their original collective work. The freelance writers filed a lawsuit against the print and electronic publishers and others alleging copyright infringement. The print publishers argued that publication of the articles in the electronic database was privileged reproduction of collective works under US 17 U.S.C.S. § 201(c).  The US District Court ruled for the print publishers.  On appeal, the court of appeals reversed the District Court decision holding that the freelance articles were not the type of collective works protected under section 201(c) and the database was not a "revision" of the periodicals in which the articles initially appeared.   

On certiorari, the Supreme Court affirmed. It held that the electronic publisher infringed upon the freelances' copyrights by publishing their articles without authorization and because those articles in the database were not privileged reproductions under US 17 U.S.C.S. § 201(c).  Additionally, the Supreme Court held that the print publishers infringed upon the freelances' copyrights by authorizing publication of their articles and aiding the electronic database to publish them.   Justice Stevens, J., joined by Breyer, dissented.  He held the freelances' articles published in the electronic database were revisions of the print publisher's collective work and therefore protected by section 201(c). 

The Supreme Court held that "A newspaper or magazine publisher is 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: (1) that collective work to which the author contributed her work, (2) any revision of that collective work, or (3) any later collective work in the same series. A publishing company can reprint a contribution from one issue in a later issue of its magazine, and can reprint an article from a previous edition of an encyclopedia in a later revision of it; the publisher cannot revise the contribution itself or include it in a new anthology or an entirely different magazine or other collective work."  Thus, reproduction of collective works print articles in databases or electronic forms may constitute privileged revisions under 17 U.S.C.S. § 201(c) as long as the articles are republished as revision of that collective work, a new series or edition,  or as a whole.  "Essentially, 17 U.S.C.S. § 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, as amended in 1976, allows the freelancer to benefit from that demand; after authorizing initial publication, the freelancer may also sell the article to others." 

This Supreme Court decision has been followed by the majority in Greenberg v. National Geographic Society, 11th Cir., No. 05-16964, 6/30/08.  The 11th Circuit held that the National Geographic's use of a freelance's photographs in CD ROMs is a privileged revision of collective works under 17 U.S.C.S. § 201(c).  In this case, the National Geographic published in a 30-CD ROM library every magazine published since 1888. The CD ROMs contained images of the exact collective works in which the freelance's photographs were published. Using the above test-mentioned test by the Supreme Court, the 11th Circuit held that each magazine of the National Geographic's was a collective work and as such it could be reproduced in CD ROMs under the 201(c) privilege.    

Martha L. Arias, Immigration and Internet Law Attorney, Miami; IBLS Director

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