Technology Law Column

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Published in the Chicago Daily Law Bulletin, October 9, 1997 at page 6.

Database providers collect court decisions.

Copyright 1997 by David Loundy

Two recent cases have addressed the issue of electronic uses of collections of copyrighted works and when a service provider may be liable for making copies of such works available to the public.

The first case is the long awaited decision in Tasini v. The New York Times Co., 93 Civ. 8678 (SS), S.D.N.Y., Aug. 13, 1997 (available on the Internet at In this case, a number of freelance writers sued various electronic distributors claiming that, when the authors sold rights to their articles, the rights conveyed did not include the right to "reuse" the works in electronic databases.

It is an elementary principle of copyright law that one has only the rights to use a work that he or she acquires from the copyright holder or that are provided by the provisions of the Copyright Act. Thus, if a writer grants to a publisher "first North American print rights," the author's license alone would not allow the publisher to then copy that same article onto a CD-ROM or add it to a computer database such as those maintained by Lexis/Nexis.

The plaintiffs in the Tasini case were six freelance writers whose works were used in the defendants' assorted electronic products, allegedly without the plaintiff's consent. The electronic products consisted of a variety of different presentations of the works in electronic form. One product was the Nexis database, which contained the full text of the plaintiffs' articles, in no particular order (but with issue and page numbers preserved as part of the database file but without other features, such as advertisements and pictures, from the original print publication). The Nexis database also contains works from a vast array of publishers in its database.

Another of the electronic products at issue in Tasini is The New York Times OnDisc. This CD-ROM product contains basically the same information as the Nexis database, but it contains works only from the New York Times.

The third product at issue in Tasini is General Periodicals OnDisc, which is an image-based CD-ROM that includes portions of a variety of publications, but the articles are stored as images of the actual pages from the periodicals in which the works appear.

The Tasini court had little trouble finding that the publishers had only limited rights in the articles they had published. The publishers had only the initial rights obtained, and any subsequent rights that applied to the publishers' compilation. A collective work is a work that is comprised of other elements which are often separate works onto themselves which are collected and arranged into a compilation. 17 U.S.C. 101. Thus, an anthology of stories or a magazine consisting of articles and pictures is a collective work.

The selection and arrangement of the elements which comprise the compilation constitutes the compiler's protectable collective work. The author of the compilation does not necessarily have any rights in the individual elements beyond the right to use the elements in the collective work. The author of the collective work can use the component works as part of the collective work or as part of subsequent revisions of the collective work. 17 U.S.C. 201(c).

The plaintiffs contended that the use of their articles in the electronic products did not constitute use of their works as part of, or subsequent revisions to, the collective works.

The court held otherwise.

The Tasini court found that the legislative history implies that the allowance of "revisions" to a collective work should be read broadly. However, the collective work must still be a recognizable version of the initial collective work if it is still to be considered only a revision. To evaluate this, the court found that it is necessary to determine what aspects of a collective work constitute the defining elements which need to be preserved and held that the defining element of a collective work is the selection of elements which comprise the compilation. Tasini holds that the electronic works at issue all preserve this selection, as all of the electronic products contain the articles selected by the publisher.

The plaintiffs argued that the selection was not preserved by the publishers in developing the electronic products, because the databases allow access to individual articles-- regardless of whether the whole work is contained in the database. Furthermore, the articles are stored in the database without relation to any other articles that the initial compilation may have contained, and the database is combined with other articles from other compilations.

U.S. District Judge Sonia Sotomayor refuted this contention on the grounds that, but for the editors' selection of the articles for the initial print compilations, they would not have been included in the databases at all, and thus the selection is, in fact, preserved. Furthermore, the selection is preserved because an article pulled from the database still retains a reference to the initial periodical the article appeared in, and its location in that periodical. The databases also allow users to retain the ability to search for articles which appeared only in one publication, thus removing the issue of the intermingling of articles from different publications.

This holding is not a satisfying one. The General Periodicals OnDisc product does maintain the character of the original work. The disk contains exact images of the magazine pages. You can see a publication, in whole, as the editors originally envisioned the work. You can see the advertisements, the pictures, and you can see which articles came before and after a particular article. In this instance, the Tasini court's holding seems to be correct.

A Nexis database, on the other hand, does not so readily preserve the character of the original work, nor is the database used as would be the original publication. If a reader views an article discovered by searching a Nexis database, the reader is not able to view the article in context as it originally appeared in print. Page numbers merely become citations. Although the Tasini court held that the selection was maintained, based on how the database is actually used, this is often not the case. Most people do not access Nexis to read the morning paper.

Frequently, multi-periodical databases such as Nexis are searched for specific topics within a large collection of works, not because of a desire to take advantage of an editor's particular selection of articles. Because of the removal of context, coupled with the frequent compilation of multiple periodicals into one database for search purposes, as well as the different audience for the original and the electronic products, it seems disingenuous to say that a Nexis database is merely a revision of The New York Times.

The second case worth discussing is Playboy Enterprises, Inc. v. Webbworld, Inc., 968 F. Supp. 1171 (N.D. Texas 1997) available on the Internet at This case involved a company that collected sexually explicit pictures by scanning "usenet news" on the Internet, and then archiving the extracted pictures on a web site. The company then charged users for access to the web site. Many of these pictures originated in Playboy Magazine.

Again, elementary copyright principles state that a user has the rights in a work that you obtain from the copyright holder, or that are provided by the law. In this case, the pictures were illegally scanned from Playboy's magazines and distributed via Usenet News. Thus, Webbworld had obtained no rights from the copyright holder (or, in this case, the law). It would seem that this case constitutes a clear illustration of infringement.

A complicating factor, however, is the Netcom case. In Religious Technology Center v. Netcom On-Line Communications Services, Inc., 907 F. Supp. 1361 (N.D. Cal. 1995), the court refused to hold an Internet service provider liable for distributing copyrighted material distributed via Usenet News. The court reasoned that the provider's only actions were to set up a machine to provide access to usenet news, and then collect a fee from subscribers-- the service provider engaged in no volitional acts with regard to the infringements. Because of this lack of action, the court refused to impose liability.

I have long argued that this was not the only possible outcome in the Netcom case.

The judge in the Webbworld case, essentially proves this point without realizing it. The judge differentiates the actions of Webbworld by mischaracterizing its service as fundamentally different from the service provided in the Netcom case. Netcom provided access to copyrighted materials distributed via Usenet News-- the works were viewable with a news reader. Webbworld provided access to a subset of the same Usenet News material, but it was viewable in the form of a web page. The conversion process from Usenet News to the web archive is automated by computer software. The court in Netcom found significance in the fact that Netcom collects money for also providing Internet connections, as well as access to usenet news, while Webbworld collects only money for providing access to a subset of usenet news.

I think the difference is merely one of degree, and not a difference in kind.

The Tasini case establishes that distributors of electronic works may have more rights than authors may have intended to convey. The Webbworld case, on the other hand, arguably holds that a distributor's liability for exceeding the rights it does have to distribute protected works may be broader than some other courts have held. I am sure that both of these decisions are likely to be influential, though eventually modified by later cases, or perhaps, by legislation.

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