When Copyright First Met The Digital World: A Retrospective And Discussion Of New York Times v. Tasini, 533 U.S. 483 (2001)

• Published date: 16 August 2021
• Subject Matter: Intellectual Property, Copyright
• Law Firm: Bryan Cave Leighton Paisner LLP
• Author: Eric P. Schroeder, Brian M. Underwood and Nicholas A. Bedo

Introduction

The U.S. Supreme Court's decision in New York Times v. Tasini, 533 U.S. 483 (2001), was an early ruling addressing the application of copyright law to the then nascent digital world. In Tasini, the Court ruled that freelance journalists retained copyrights for their individual articles and that in the absence of written agreements, publishers could not license the simple text of such articles to computer databases (or for use on searchable CD-ROMs) without infringing the author's rights, if the articles were not presented as part of a collection of the publishers' work (such as a daily newspaper). In a broader scope, the ruling tilted the playing field more favorably toward writers and other content creators and increased copyright liability for publishers, broadcasters, and distribution platforms. In so doing, the decision helped generate a market shift where publishers carefully documented rights agreements with content creators-both retrospectively and prospectively-and led to the modern-day rights-and-clearances departments for many news media legal departments, which maintain and police those agreements while also clearing the rights to use third-party content.

Thus, while much of the factual scenario and technology addressed in the Tasini decision-handshake or oral agreements with content creators, searchable text-only databases, CD-ROMs, etc.-may now seem antiquated, Tasini remains a cornerstone of modern copyright law as the first Supreme Court decision to grapple with easy republication of print content in a digital format. As a result, while Tasini's immediate impact on litigation was limited, the decision remains instructive for laying bare the tension between the need to adequately incentivize and reward content creators, the benefits of public access, and the competing economic positions between content creators and publishers and a sometimes ambiguous Copyright Act. Recent innovations, such as "embedding," provide a fresh battleground for these tensions, requiring courts to determine the appropriate balance-as established by the Copyright Act-between an author's control over the display of their works and the technical realities of the web, which allow anyone to view the author's original copy with just a few lines of code and the appropriate web address, all without ever copying the work in the traditional sense. But as with Tasini, decisions regarding the Copyright Act's default rule are just the first step in the analysis-how markets react and adjust to those default rules are just as, and sometimes more, important in determining the rights and obligations of private parties.

On January 29, 2021, a panel of Tasini litigants and media industry lawyers and professionals¹ discussed how the case arose and unfolded, explored the decision's legacy for the modern media lawyer, and discussed the evolving world of rights, clearances, and copyright infringement in a digital world. This article and the below discussion served as a historical primer on the Tasini decision and highlights the issues covered by the panel.

Background

The Inherent Tension in the Aims of Copyright Law

The U.S. Constitution gives Congress "the Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const., art. I, ' 8, cl. 8.

Thus, in enshrining copyright law in the Constitution, copyright protection is given to content creators for a limited time as an economic incentive to produce and disseminate their work into the marketplace for the public's benefit. There is an inherent tension in these twin purposes, for while the Supreme Court has stated, "[t]he primary objective of copyright is not to reward the labor of authors, but '[t]o promote the Progress of Science and useful Arts,'" Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991) (citations omitted). The Supreme Court has also consistently acknowledged that "encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors. . . . Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered." Mazer v. Stein, 347 U.S. 201, 219 (1954). And Congress has tried to balance these competing purposes in numerous copyright statutes, including the Copyright Act of 1976 (the Act) at issue in Tasini.

The Copyright Act of 1976 and Ownership and Transfer of Copyright

Under the Act, copyrights are granted to original works of authorship in any fixed, tangible medium of expression. Today, copyright inheres as soon as a work is written or recorded. The author of the work is the original owner of the copyright. The copyright owner is granted a bundle of exclusive rights including the right to reproduce the work, distribute copies, create derivative works, publicly perform the work, and display the work. Each exclusive right is divisible from the others and, therefore, independently transferable. A transfer of one or all of these exclusive rights is valid only if conveyed in writing and signed by the copyright owner.

Before passage of the Act, copyright was a single, indivisible right (the Doctrine of Indivisibility). When an author transferred copyright, in whatever form, everything went with it, and the author was left with nothing to transfer to anyone else. See, e.g., G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir. 1951). Under this regime, failure of the author to reserve any rights created a presumption of copyright ownership in favor of the publisher of the work, and thus freelance authors lost their copyrights when their articles were included in collective works such as newspapers if there is no written agreement addressing the issue.

While the Doctrine of Indivisibility could work in the author's favor if the author retained his or her rights by written agreement, the Doctrine of Indivisibility was criticized as being unfair to authors, as one misstep by an author could lead to a complete surrender of ownership in his or her copyright. The Act effectively rendered the Doctrine of Indivisibility obsolete by granting owners a "bundle of rights," as set forth in section 106 of the Act:

Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based upon the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.

17 U.S.C. ' 106. In section 201(d), the Act clarified that each of these rights is separate and may be individually transferred:

(1) The ownership of copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.

(2) Any of the exclusive rights comprised in a copyright, including any subdivision of any of the rights specified by section 106, may be transferred as provided by clause (1) and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner. . . .

Id. ' 201(d).

Collective Works

A "collective work" is a work, such as a periodical, newspaper, or anthology, in which a number of contributions, constituting separate and independently copyrightable works, are assembled into a collective whole. Section 103 of the Act addresses the scope of protections for "compilations," making clear that the copyright in a compilation "extends only to the material contributed by the author":

(a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.

(b) The copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.

Id. ' 103.

To address the criticism of the Doctrine of Indivisibility vis-à-vis collective works, Congress enacted the Act's Contributions to Collective Works provision, section 201(c), with the below comment in the legislative history:

Subsection (c) of section 201 deals with the troublesome problem of ownership of copyright in contributions to collective works, and the relationship between copyright ownership in a contribution and in the collective work in which it appears . . . one of the most significant aims of the bill is to clarify and improve the present confused and frequently unfair legal situation with respect to rights in contributions.

H.R. Rep. No. 94-1476, at 122. And section 201(c) states:

Copyright in each separate contribution to a collective work is distinct from copyright...