ELECTRONIC RIGHTS: The Supreme Court’s “Tasini” Ruling
IVAN HOFFMAN, B.A., J.D.
The United States Supreme Court ruled that print publishers such as newspapers and magazines may not use material in online databases to which they had previously obtained only print rights from independent contractor creators. The Court’s ruling establishes that such online and electronic uses are separate uses from that of print. Publishers had argued that they had these rights under the “collective works” section of the United States Copyright Act. That section provides in part:
§ 201. Ownership of copyrightThe publishers' argument was that the online uses within an electronic database were a “revision of that collective work,” meaning a revision of the original print publication. This was the argument rejected by the Court saying that the use within a database was a separate use, not contemplated by the foregoing provisions. The Court stated:
(c) Contributions to Collective Works.-Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.
In accord with Congress prescription, a publishing company could reprint a contribution from one issue in a later issue of its magazine, and could reprint an article from a 1980 edition of an encyclopedia in a 1990 revision of it; the publisher could not revise the contribution itself or include it in a new anthology or an entirely different magazine or other collective work.
The issue arose because the contracts by which such print rights were acquired were either silent on the issue of “electronic rights” or were vague and uncertain. I have written about this issue in several other articles that you should read on my site. See “Electronic Issues in Publishing Contracts,” “Electronic Publishing and the Potential Loss of First Serial Rights” and “Digital Rights Management.”
If you are a publisher or have otherwise acquired rights to materials and your contract is more than just a few years old, it may be deficient either because it does not speak to or is vague in defining the “electronic rights” that you need. You should examine your contracts in this regard and if necessary, have those contracts updated for current and future use.
© 2001 Ivan Hoffman