BY Kristen E. Fligel and Bob Labate
The Emerging Rules of Digital Distribution
While the litigation between Napster and the recording industry grabs most of the headlines, a number of cases are quietly redefining the contours of copyright law particular in the area of digital distribution. When can a newspaper, like the New York Times, redistribute articles over the Web? Should a Web page be treated like a printed page? Can a national magazine, like National Geographic, republish its entire collection in CD-ROM format without repaying for photographs and articles? In some cases, the new rules for digital distribution look a lot like the old rules for print, but new law is emerging and it will change the way we do business.
National Geographic Goes Digital
In 1996, the National Geographic Society, in collaboration with Mindscape, Inc., created the Complete National Geographic ("Complete Geographic"), a set of 30 CD-ROMs which included every issue of the magazine from 1888 to 1996 in digital format. In addition to a digital reproduction of every issue of the magazine, the Complete Geographic contained a "moving covers sequence" displaying 10 past magazine covers (each for 25 seconds) with synchronized music, sound effects and overlapping fades. In addition, the Complete Geographic contains a program that allows the user to search for and retrieve specific articles and images, making the Complete Geographic a searchable data repository.
But what National Geographic viewed as simply a digital version of its magazine, one of its photographers, Jerry Greenberg, saw an attempt to reuse his work without additional payment. Greenberg, who worked as a freelance photographer for over 30 years, objected to National Geographic’s use of four separate photographic assignments which were included in the Complete Geographic CD-ROM set.
At issue was whether the creation of the digital Complete Geographic was merely a derivative work, a "compilation of pre-existing material primarily pictorial" to which a "brief introductory audiovisual montage’ had been added (and thus permitted under U.S. Copyright laws) or whether the digital Complete Geographic was, in fact, a completely new work that required the permission of the copyright holder, Greenberg.
The Copyright Monopoly
The roots of this controversy lie in the fact that owner of a copyright under the Copyright Act (section 106) has six individual, separately assignable rights, namely the rights to reproduce, prepare derivative works, distribute, perform publicly, display, or perform the work by digital audio transmission.
Because these rights are separate, they can (and often are) individually assigned to others. In this case, Greenberg assigned some (but not all) of his rights to National Geographic so that his photographs would be published in the magazine. Thus, the National Geographic also held the right to reprint Greenberg’s photographs as part of any reprint or revision of the "collective work" that is the original magazine in which they first appeared.
If the digital Complete Geographic was merely a reprint or revision of the original magazine, then Greenberg’s photographs could be included without additional permission. But if the digital version was something more than a reprint or revision, Greenberg could prevent the magazine from reusing his photographs.
Contrasting Rulings
The trial court ruled for National Geographic, ruling that the re-use of Greenberg’s photographs was within the National Geographic’s privilege (under section 201 of the Copyright Act) to reproduce and distribute the work because it owned the copyright in the original issues of the magazine in which the photographs appeared. The Complete Geographic, the court reasoned, was no more than a compilation of pre-existing material in digital form.
The appellate court, however, disagreed and reversed the trial court’s decision, based on the conclusion that the Complete Geographic was in no sense a "revision," of a previous collective work. The digital version contained additional audio and visual material and, thanks to the search program, was a retrievable database from which individual articles and images could be drawn. Thus, it was a completely new work requiring the permission of the original owner of the pictures used in the Complete Geographic.
The Right to Print E-Books
What happens when a book publisher wishes to print a digital, E-Book, version of a book previously printed in a hardcover edition? Does the right to publish the author’s work "in book form" include the right to publish e-books? In Random House v. Rosettabooks, a lower court case still pending in the state of New York, Random House alleges that it owns electronic titles of certain books it has published based upon a clause in the original author book contracts. The clause states that each author gave the publisher the right to "print, publish and sell in book form" each author’s work. Each contract was signed prior to 1995. E-books did not exist in 1995. Defendant Rosettabooks contends, however, that it paid for and contractually acquired those electronic-publishing rights from the authors, their estates or their agents. Does, or should, "book form" include e-books?
The Random House case is about 100 titles, including some by well-known authors like Kurt Vonnegut, but it could impact all 20,000 titles in Random’s backlist and those of other publishers. Simon and Shuster has sided with Random House. The Authors Guild and the Association of Authors Representatives have joined in support of authors, as has the lawyer David Bois, who formerly represented the Justice Department against Microsoft.
The Right to Reprint Individual Articles
Finally, what happens when a publisher puts an entire periodical, including works of individual authors, online without permission of the authors? The Tasini v. New York Times Co. case, now before the United States Supreme Court, will decide. The appellate court in Tasini, much like the court in National Geographic, decided that section 201(c) of the copyright act does not afford privileges to publishers of articles on electronic databases. This decision was a reversal of the district court decision, which had said that databases could be considered merely as "revisions," see section 201(c) above, of the individual periodical issues (collective works in themselves) from which the articles were taken. Attorneys for publishers have argued that digital distribution is much like the non-violative act of microfilming. In contrast, counsel for the freelance authors’ claim that such publication is fundamentally different because, unlike microfilming, it substantially diminishes the marketability of the author’s original work.
Arguments were heard in the Tasini case in late-March. The Court’s decision, when it arrives, should further define the rights of publishers to digitally distribute their wares.
Stay tuned for further developments.
2001 Robert J. Labate. This column is provided as a source of information and is not to be construed as legal advice or opinion. The characters and situations are entirely fictional. You may send questions or comments via mail, to Robert J. Labate, Defrees & Fiske, 200 South Michigan Avenue, Suite 1100, Chicago, IL 60604.