The Illustrated Story of Copyright

A Note on the Tasini Case

      On June 25, 2001, the Supreme Court of the United States, by a vote of 7 to 2, decided the Tasini case in favor of the author/plaintiffs. I've included here the full opinion of the Second Circuit Court of Appeals (which was affirmed), the majority opinion of the Supreme Court (per Justice Ginsburg), and the Supreme Court dissent (per Justice Stevens).

      Tasini and the other authors wrote articles that appeared in the New York Times and other publications. The Times and the other publications then licensed Mead Data Central Corp. to publish the articles on NEXIS, their online database, and on CD-ROMs. The authors claimed that the license violated their copyright in the underlying works.

      The contracts covering the original publication of the articles did not specifically cover the right to use such materials in a database. When an independent contributor to a collective work does not make any specific provision to the contrary, the "default" interpretation of the contract, under section 201(c) of the copyright act, is that the license covers the use of the article in the collective work, or in any "revision" of that collective work. The narrow issue in the case was thus whether inclusion of such articles in a computer database was a "revision" of the collective work in which it first appeared.

      The Second Circuit Court of Appeals, and then the Supreme Court, held that making the articles available in such a database was not a "revision" under the statute, and thus held that the New York Times and the other defendants violated the copyrights of the original authors. The courts emphasized that, as seen in the database, the articles were simply copies of the original individual works, retaining none of the context or formatting as the articles appeared in the newspapers or magazines.

      Each side in the case had a very good public policy argument. The authors didn't sell the copyrights in their works, but only granted a limited license to the newspapers and magazines; accordingly, it made perfect sense, particularly given the narrowness of the license provided in the copyright act, to protect the authors of the original works rather than give the economic benefit of a whole new market to the licensees of the rights. On the other hand, the licensees argued that, if it was necessary to get permission (and pay for permission) from all contributors to their publications, then it would be difficult if not impossible to make historical records, such as the New York Times, available through online or other databases. It might be argued that the case would be a closer one when CD-ROMs are used to digitize the entire original newspapers in which the articles are written (as in another appellate court case decided against National Geographic), while retrieval of individual articles from an online database, devoid of their original context, might more plausibly remain within the control of the original contributors. However, the majority seemed unconvinced by the distinction, and affirmed the rights of authors in both contexts

      While the specific issue before the Court involved a narrow interpretation of a specific provision of the copyright act, similar issues are raised in many other contexts. Whenever a new technology becomes available, it is unclear whether existing contracts granting rights in copyright include the new technology or not. Did a contract covering theatrical rights in a book at the end of the nineteenth century cover their inclusion in a motion picture when that technology was invented? Did a contract covering motion picture distribution rights in the middle of the twentieth century include the right to distribute such works in video tapes or disks when the home video technology was later developed? Many of the cases turned on how general the language was in the given contract; and the outcome in the Tasini case depended upon an interpretation of one specific clause of the copyright act. But since the general problem arises in so many new technology contexts, the case may have repercussions beyond its narrow scope, and strengthen the claim of authors in such new technological uses of copyrighted works.

      While the dissent expressed some concern about granting an injunction in the case, the majority concluded that it was too early to discuss the remedy, and that the lower court should be the one to fashion an appropriate remedy, weighing the pros and cons of granting injunctive relief. Along with other recent cases that have limited injunctive relief (the appellate court opinion in the Napster case, or the appellate court opinion denying a preliminary injunction in the "Gone With the Wind" case), this case would seem to suggest, at least by way of dictum, that denial of injunctive relief, or the fashioning of some more clever remedy that creates a collective licensing system, might properly balance the competing interests in this and the other cases.

Read the full text of the Second Circuit opinion.
(Second Circuit Court of Appeals, Feb. 25, 2000)

Read the full text of the Supreme Court majority opinion.
(June 25, 2001)

Read the full text of the Supreme Court dissent.
(June 25, 2001)

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