In 2001, the United States Supreme Court handed down one of the most significant copyright cases it had decided in decades. In that case, New York Times Co. v. Tasini, the Supreme Court confirmed what many of the lower courts had earlier stated, namely, that the copyright laws of the United States do apply in cyberspace. It also attempted to clarify some of the rules with respect to this form of new technology and to establish guidelines for the future. The Supreme Court then remanded the case to the original trial court for adjudication based on the new rules.

Shortly before the Supreme Court’s pronouncement, a number of prominent authors (including Derrick Bell, E. L. Doctorow, Lettie Cottin Pogrebin and James Gleick), as well as the American Society of Journalists and Authors, the Authors Guild and the National Writers Union, filed a class action against numerous publishers and database companies, including the New York Times, Time, Inc., the Wall Street Journal, Dow Jones Interactive, Knight-Ridder, Lexis-Nexis, Proquest and West Group for copyright infringement, based on facts similar to those in the Tasini case. In both this case, In re Literary Works in Electronic Databases Copyright Litigation and the Tasini case, it was noted that it was typical for independent writers to sell their articles to publishers without a written agreement. Customarily, it was argued, the arrangement was for the publisher to have only first publication rights for the article, whereas all other rights were retained by the author.

In the 1980s and 1990s, when electronic communication emerged, many publishers, such as those involved in the Tasini and Literary Works cases, either created electronic databases themselves or entered into arrangements with electronic publishers to have articles included in electronic databases. When the authors whose works were involved learned that their materials were being made available online without their consent, the litigation began. In the Tasini case, several freelance authors sued the New York Times Co., Newsday, Inc., and Time, Inc., for those publishers’ licensing of electronic rights to Lexis-Nexis and University Microfilms International.

It was the authors’ position that the publishers had acquired only the right to first publication for their articles in a tangible newspaper or periodical, and, since all other rights were retained by the author, publication online without the authors’ permission was unauthorized. The publishers argued that the electronic publication of the articles was simply a “revision” of the original collective works, expressly permitted by the U.S. Copyright Act.

The Supreme Court agreed with the authors’ position. The Court made it clear that publishing online is not merely a “revision” since the articles were not published in the same context and noted that the databases offered individual articles rather than intact periodicals.

The Supreme Court’s approval of republication of an article when the republication is in the same context was recently relied on by the United States Court of Appeals for the Second Circuit in another landmark case, Faulkner v. National Geographic Enterprises, Inc. In this case, many authors and photographers whose works appeared in National Geographic magazines over the years filed suit against the publisher alleging that it infringed their copyrights when it distributed a collection of CDs containing the entire collection of National Geographic magazines from 1888 to 1996. It was the position of the complainants that republication of their copyrighted works in electronic form without permission was an infringement. This position had, in fact, previously been upheld by the United States Court of Appeals for the Eleventh Circuit in Greenberg v. National Geographic Society, in which the magazine was held liable for copyright infringement.

The Second Circuit distinguished the earlier Eleventh Circuit case, however, because it predated the Supreme Court’s pronouncement in Tasini and was apparently inconsistent with the Supreme Court’s position on electronic publishing. It is now clear that at least in the area covered by the Second Circuit (which includes New York, Connecticut and Vermont), republication of the works in a different medium is permissible so long as that republication is in context (i.e., the entire newspaper or periodical). In this case, the court noted that the National Geographic reproduction of the articles preserved the context and was, in fact, similar to reproduction on microfiche, which the Supreme Court had expressly approved as a simple legal conversion from one medium to another. The National Geographic articles appeared exactly as they had within each issue; the entire magazine was scanned, showing the page numbers, photographs and advertisements exactly as they had appeared in the original magazine.

Presumably based on the holding in Tasini, the District Court for the Southern District of New York recently gave preliminary approval for a settlement of between $10 and $18 million to be paid to the authors involved in the Literary Works case, which involved articles that were not reproduced exactly as they had originally appeared. The actual amount to be paid depends on a number of factors, including copyright registration, the original fee paid, the year published, and whether the writer permits future electronic publication.