THE CASE THAT WILL
NOT DIE!
October 2001
Last month I foolishly titled the column “Tasini, the Final Chapter.” Wrong! This case will not die, and there will be other actions associated with if for some time. On June 25, 2001, the U.S. Supreme Court decided that the inclusion of articles by freelance authors in electronic databases absent copyright transfers was infringement. The case, however, did not decide the issue of damages.
Immediately following issuance of the decision in favor of freelance writers (see last month’s column), the New York Times, announced that it would delete 115,000 freelance works, dated from 1980-95, from its own and other databases. Throughout the litigation, the Times and other publishers of databases stated that if the writers won the case, databases would have no choice but to delete from their databases works of freelance writers included without compensation to the writers and without a transfer of the electronic rights from the writer to the publisher. The Times ran newspaper ads and created a website for freelancers which contained the information that works would be removed. However, if the author would agree to forfeit all “past, present and future copyright infringement claims” against the Times, it would restore the freelance works to the database. This would constitute a waiver of the writers’ rights to compensation for inclusion of their articles in the database.
In response to the Times’ actions, on July 3 the Author’s Guild filed a class action suit on behalf of 15,000 writers alleging that the Times violated the rights of freelance writers as determined in Tasini and asked for damages and injunctive relief. Other suits were filed against Dow Jones Reuters, Lexis-Nexis, Westlaw, Dialog and Proquest accusing them of systematic copyright infringement for failure to compensate freelance writers for their articles that were included in the publishers’ databases from 1978-95. Tasini, of the National Writers Union, (which brought the Supreme Court case) estimates that writers will be owed billions of dollars, but attorneys for the databases state that damages will be minimal. In a more conciliatory statement, Tasini also called for negotiations toward a settlement and a licensing system now that liability has been established.
Additionally, the Authors Guild created a webpage that recommends authors retain their rights to be compensated for unauthorized electronic publication of their contributions to the New York Times, the Boston Globe and 19 regional newspapers.
On July 27 the Authors Guild reached agreement with the Times regarding its planned removal of articles by freelance authors from its databases unless such authors waive their rights to compensation. The Times has agreed to cease its advertising campaign and to provide information to freelancers about the class action lawsuit on its webpage and in written materials that are being mailed. In return, attorneys for the Authors Guild agreed to withhold a motion for a temporary restraining order requiring the Times to cease its advertising campaign and remove the website. Members of the Guild stated that this was an important first step to an overall settlement of the claims of freelance authors against database publishers. It also recognized the importance of ensuring that the database remains complete while authors receive fair fees for electronic uses of those articles.
Additional settlement of claims will depend on the class action suit or on subsequent negotiations between publishers and freelance writers.
Electronic Books
The Authors Guild has issued a warning to its members concerning a similar case. In Random House, Inc. v. Rosetta Books,[1] the U.S. district court denied the publisher’s request to enjoin Rosetta from publishing electronic books for which Random House held the print rights. Rosetta had obtained the electronic rights directly from the authors. Random House sought to enjoin Rosetta from approaching the authors of its nearly 21,000 backlist titles and argued that the copyright transfer to the print rights also covered electronic rights. The Authors Guild filed an amicus brief on the side of Rosetta that was joined by the Association of Authors Representatives which represents literary agents.
Rosetta had published eight books in digital format and offered them for sale; the print rights for these books belong to Random House. Works in question include two books by William Styron, The Confessions of Nat Turner and Sophie’s Choice; five by Kurt Vonnegut, including Slaughter-House Five, and Robert B. Parker’s Promised Land.
Since 1994 Random House has included the electronic rights in its standard publishing contract, but prior to that date, the copyright transfer agreement was silent about electronic rights. Based on the decision in Tasini, it is clear that all rights not specifically transferred to the publisher remain with the author. The pre-1994 Random House contract had used the phrase “print, publish and sell the work in book form,” so an important issue in the case was whether an electronic book meets the standard definition of the word “book.” The court decided that it did not. The court used the Random House Webster’s Unabridged Dictionary for the definition of a book: “a written or printed work of fiction or nonfiction usually on sheets of paper fastened or bound together within covers.”
The contracts had separate grant language to convey the rights to publish book club editions, reprint editions, abridged forms and Braille editions. According to the court, this language would not be necessary if the phrase “in book form” encompassed all types of books. Another contractual clause, referred to as the photocopy clause, gave the publisher the right to photocopy or otherwise copy the work in forms now in use or later developed. Random House argued that this clause bolstered its position that “in book form” included digital works, but the court was not persuaded.
The judge found that electronic digital signals sent over the Internet is a separate medium from the original use, i.e., printed on paper. This is because of the additional features that permit manipulation of the information that a printed work does not. Additionally, a software program and specific hardware is needed to enable the reader to view the text, and this also distinguishes it from analog formats.
Random House stated that it was disappointed by the ruling, but that "we stand by our view that an e-book is a book and that Random House's backlist contracts give us the rights to publish the works in e-book form." The company will review the decision before deciding whether to appeal.
But all is not well even for current publishing contracts for e-books. The Authors Guild has warned its members that Time Warner’s new iPublish division may present significant legal risks for its authors as well as loss of rights. The rights granted to the publisher by the contract include the exclusive rights to any means of delivery now known or later developed. The Guild states that the definition of digital rights is so broad as to include audio book rights and rights to digitally printed books, such as print-on demand books. Another problem the Guild notes is that simply by submitting manuscripts to iPublish, writers agree to the terms of the contract. Worst of all, even if Time Warner does not publish the book, it would have an automatic claim on the author’s next work!
These cases and the actions of authors’ organizations certainly have implications for libraries. The increasing importance of license agreements in libraries is mirrored by the importance of publishing contracts for authors. The interpretation of specific language from these contracts may affect libraries’ ability to acquire and use information in digital form. For example, librarians have maintained that digital works are no different from printed works when it comes to copyright. Unfortunately, courts appear to be disagreeing with this position.