Publications

A grant of rights to a copyrighted work does not necessarily permit use of the copyrighted work in a digital or electronic form. Two recent judicial decisions illustrate the need for agreements to expressly indicate whether a grant includes digital and electronic media.

In one case, Random House v. Rosetta Books, the District Court for the Southern District of New York held, and the U.S. Court of Appeals for the Second Circuit affirmed, that the right to “print, publish and sell the [copyrighted] work in book form” does not include publishing the work as an “e-book.” In another more publicized case, New York Times Company v. Tasini, the Supreme Court held that publishers cannot make the copyrighted works of freelance authors available in an electronic database unless the agreement with the author expressly granted that right.

In Rosetta Books, the court was faced with the latest e-book technology and interpreting agreements between publishers and authors that were between twenty and forty years old. Each agreement, while granting broad rights in regard to publication in book form, limited the scope of the agreement by reserving certain other rights such as motion picture rights or foreign language rights. The court relied on the restrictive nature and language of the agreements to determine that the agreements were not broad, carte blanche grants of all the rights associated with the copyrighted works. Ultimately, the court determined that the “new use” of e-books (electronic digital signals sent over the Internet) is a separate medium from the original use (printed words on paper) and therefore not covered by the agreements.

In Tasini, the Supreme Court found that publishers were infringing the copyrights of freelance authors by allowing the articles, which originally appeared as a part of a collective work (for example, a newspaper or magazine) to be obtained individually through electronic databases such as Lexis/Nexis. Specifically, the Court determined that Section 201 of the Copyright Act does not allow publishers to reproduce or distribute the individual works separately via electronic databases. The Court differentiated between “individual articles” and “intact periodicals.” A publisher can transfer the entire collective work as it originally appeared, advertisements and all, on, for instance, microfilm or a CD-ROM within Section 201. A publisher cannot, however, barring express permission from the author, offer the articles individually, wholly apart from the collective work.

The Tasini decision has confirmed the publishing industry’s challenges associated with making its past issues of magazines, newspapers and journals available through an electronic database. Going forward, however, there are some things that both publishers and authors can keep in mind: Both parties will benefit from a clear identification of the rights granted from authors to publishers, and those retained. Publishers may want their agreements with authors or other contributors to include the rights for all foreseeable uses, including technology not yet developed, of the copyrighted work. Certainly, if the work is to be posted for distribution electronically or published as an e-book, that use must be explicitly stated in the agreement. Older agreements must be reviewed to determine whether digital/electronic use is authorized.

For further information contact:
Christopher Perry