Tasini v. New York Times: A Tantalizing Possibility

In its decision in the Tasini v. New York Times case, the U.S. Supreme Court may have left an opening that might allow for posting articles online in electronic editions of newspapers without the threat of infringement lawsuits brought by free-lance writers, photographers or artists. Let it be clear: This is analysis, a mere expression of opinion, or perhaps unabashed wishful thinking.

The first clue is in the summary of the court’s June 25 decision. It says publishers don’t have a privilege to "reproduce and distribute [free-lance] articles standing alone and not in context, not part of that particular collective work to which the author contributed."

The court held that publishers may not re-publish freelancer’s articles later in electronic databases (owned by LEXIS-NEXIS and University Microfilms) without the permission of the freelancer because these articles appear "clear of the context" of the original edition of the newspaper. "The Database does not reproduce and distribute the article as part of either the original edition or a revision of that edition," the court said. A publisher can "reprint" an article that has appeared in one issue of its newspaper to appear in a later edition, the court said, but it ruled that the infringement takes place when the freelance article is sold out of context, or outside the "collective work" of the newspaper.

Furthermore, the court said databases prompt a search from thousands of articles. Each article is shown to the user in isolation, without the context of the original publication or read as a collection of stories of the day. These databases are not the same as a newspaper, not in appearance or in the usage.

The most important clue is in the specific statement that the court was considering the freelance articles as they appear to the people using the databases. The court did not consider any additions of background software and computer codes used to present the articles in this decision. That makes what could be a mighty distinction between Tasini and a case that will be presented to the Supreme Court in due course.

Coming up from the 11th U.S. Circuit Court of Appeals is National Geographic v. Greenberg, a similar copyright infringement action brought by a freelance photographer against the National Geographic Society. Similar, except that the Society has reproduced virtually all of its magazines on a CD-ROM in exact copies of the original magazines. This time the 11th Circuit looked behind the electronic copy and noted the addition of coding and software. This, the appeals court said, made the publication a new product. Thus any article or photograph was ruled to be new work when it is re-published in a CD-ROM, online or in any format that requires "interaction with a computer program." In the terms of the Copyright Act, the 11th Circuit has said the electronic publication is not merely a "revision" of the original print newspaper or magazine, but is a new collective work.

Tasini does not say that. In fact, it edges away from that conclusion.

Taken together, the clues could mean the Supreme Court is willing to ignore the presence of added software and look at the visible product alone when deciding whether a new collection or a new edition has been published.

Add a third clue. In Tasini, the court rejected a comparison made by the publishers between electronic copies and microfilm copies. The court said electronic databases are different from microfilm because microfilm literally photographs the newspaper articles as they appeared in their original editions. This, though it remains anyone’s guess, apparently means that the closer the electronic product is to the newspaper, the less likely the publisher will be found to infringe.

So if a Web product makes an exact, or close copy, why isn’t it the same as microfilm?

If this theory prove outs, the Web site that displays the newspaper’s banner and the front page stories for the day might be called a revision of the original publication, especially when the Web site stays current with the daily or weekly edition of the newspaper.

In the meantime, publishers need practical answers, not theories or wishful thinking. Many newspaper publishers have already written new contracts with freelance writers. Others seem to be deciding that they will dump freelance articles from their archives. The New York Times, it is reported, has posted a Web site that allows its freelancers to indicate whether they want their articles erased or to remain in the database.

Those who have not already addressed this question need a review of their facts by a qualified attorney, which is best done before the arrival of the first demand from freelance writers, artists or photographers.