• The Electronic Database: Latest Legal Trap for the Unwary in the Digital Economy
  • May 2, 2003 | Author: Antoinette R. Stone
  • Law Firm: Buchanan Ingersoll & Rooney PC - Philadelphia Office
  • Researchers have long been accustomed to perusing back issues of newspapers and magazines in compendiums found either in hard copy or on microfilm, to locate specific articles. Since a 1976 amendment of the copyright law, the ability of publishers of "collective works" such as newspapers and magazines to reproduce articles in such compendiums has been subject to certain limitations. Unless an author expressly transfers the totality of his or her copyright to a publisher, the only right transferred is the "privilege" to print the article in the collective work, or in any "revision" of it, or as part of any later collective work "in the same series." Prior to the amendment a freelancer had to give up the totality of his or her copyrights when allowing a publisher to print it. The purpose of the 1976 amendment was to allow the freelancer to continue after initial publication to derive a benefit from future demand for the article, by, for example, selling it to others.

    Advances in data storage led to the creation of electronic databases in which thousands of collective works and the millions of articles contained in them could be stored, retrievable in a matter of seconds. These advances may constitute several giant steps forward for researchers, but, according to a recent decision of the United States Supreme Court, they also pose a threat to the constitutionally guaranteed copyrights of those freelance authors whose articles, once stored in an electronic database, would be available to anyone and everyone.

    How could this be? Surely there is very little difference between storage of last year's editions of the "New York Times" on microfilm and storage in an electronic database managed by NEXIS. However, in New York Times Co., Inc. v. Tasini, 121 S.Ct. 2381(2001), the Supreme Court said there is a significant difference, enough to require publishers to either obtain a freelancer's express permission to place an article in an electronic database or run the risk of copyright infringement.

    The publishers' and database owners' position was that even though an article can be separately identified and retrieved, it is identified by author, date and place of publication, so the concept of retrieval from the larger publication is not lost simply by virtue of the fact that the article is stored electronically. The freelancers argued that when an article is retrieved from an electronic database, it is part of an undifferentiated mass, not the particular edition of the newspaper in which it was initially published. The electronic version of the article appears outside the context of the initial publication. Formatting, advertising, photographs and other indicia that the article was originally part of a collective work are absent from the electronic version. There is no clue as to whether the article appeared "above the fold" or buried on page 57. In other words, the article does not appear to be a part of a "collective work," but merely one of millions of articles in a massive database. The significance of this differentiation lies in the fact that that the publisher's privilege beyond initial publication is limited by law to reproduction of the article in a revision of the collective work or a collective work in the "same series." If the Court were to have found that the publishers were free to reproduce articles in an electronic database, the copyrights of the freelancers would have disappeared upon initial publication. Once articles were retrievable from the electronic database by anyone with access to a computer, authors would have no chance of reaping any benefit by reselling their works to anyone else.

    The holding of Tasini is reverberating through the publishing world. Authors started filing class actions alleging copyright infringement against publishers and database owners even before the Supreme Court's decision. Publishers are revisiting their plans for digital republication of back issues. Freelancers are being forced to give up electronic transfer rights as a condition to initial publication. In their argument before the Supreme Court, the publishers criticized the position of the freelancers as a throwback to the pre-digital age and an attempt to stop the very real benefits to be derived from technological advances. What Tasini really represents is the latest clash between technological progress and basic precepts of our legal system. The lesson to be derived from Tasini and other judicial pronouncements affecting "progress" is that technology does not exist in a vacuum. Given the ever-increasing speed of technological change, doing business in the U.S. today requires an ever-greater awareness of the political, economic and legal context in which businesses must operate.