Tasini: A First
Step in the
NOTE: An excellent response by Richard Wiggins, entitled The Tasini Decision: A Victory for No One," appears at www.llrx.com/features/tasini.htm.
A few years ago, I was an editor at the American Lawyer magazine, working with freelance writers. There was never any written contract--we paid nothing, and the freelancers got their names in print. (This is called being "paid in prestige.") After the magazine appeared, the authors, who were usually lawyers writing for marketing, business and vanity purposes, frequently requested reprints of their articles. We charged them ridiculous amounts for their fancy, glossy copies. Reprints were a revenue stream for the magazine.
But there was one line on the reprint bill that I'll never forget: "Copyright fee." The freelance authors had never given their copyrights to the magazine. The magazine was charging them for something it didn't own. Nonetheless, every freelance writer paid the copyright fee, including copyright lawyers who had written on copyright law for the issue in question and who knew that they had never surrendered the copyrights to their articles. They didn't think they had the right to complain, and they were getting a fancy service, so why not just grumble and pay up? (Many people pay legal fees in the same spirit).
Now, I knew that freelance writers were treated badly. They were fungible, plentiful, and passive. I frequently freelanced and was aware that most publishers were unable or unwilling to extend even the basic courtesy of letting you know when your article appeared in print, or to see revisions. No one even thought that publishers would offer decent pay or ask permission to include your article in a collective work or electronic database. I don't think I would have ever have refused permission--like most people, I like to see my work circulated--but I would have liked to have added a few sentences to update some of my articles before they appeared.
But the American Lawyer magazine's practice (which has since changed) of charging a copyright fee to people who had never transferred their copyrights--charging freelancers for their own property--was a new level of rip-off. It illustrated the ignorance that then prevailed among freelancers, and which the Tasini case shattered forever.
Copyrights can be transferred only in writing, and the language must be explicit. If the contract says, "I transfer all rights to the publisher," the freelance author still owns the copyright. The language has to read, "I transfer all rights, including the copyright," or something similarly explicit. Copyrights--which are the rights to copy, distribute and re-use a work--are vigilantly protected in our society, but the copyright rights of freelance authors could be treated like trash, and they were.
That is, freelance rights were treated like trash until the Supreme Court decided New York Times Co. v. Tasini, 00-201 (June 25, 2001). It was a 7-2 decision--a rare, clear majority from this much-fractured court. The National Writers Union, headed by Jonathan Tasini, brought and fought the case over a chorus of ridicule from most television talking heads, of publishers crying poverty, of historians wringing their hands over the selfishness of writers who wanted to desecrate the sacred electronic historical records, and of the fears of many freelancers that publishers would never again put their work into electronic databases or on CD-ROMs.
None of this has happened or will happen. The Supreme Court sent the case back to the lower court to fashion a remedy that will justly compensate the freelancers for their work. Most remedies in class action cases involving medical injuries or complicated fact patterns are far more complex and expensive than this one. Heck, if the freelancers had slipped and fallen in the Times newsroom, the newspaper would probably be liable for more damages.
You wouldn't know it from the publishers' crying, "The sky is falling," but this was not a tough case. The freelancers never turned over their copyrights; they didn't consent to having their works republished, so the works shouldn't have been republished without their permission. Suppose the New York Times decided to issue a CD-ROM entitled, The Worst Articles We Can't Believe We Ever Published. Could the Times simply reprint freelancers' works there, without permission? According to the Times, they could, even if freelancers objected. Common sense, not to mention basic copyright law, prevailed.
It's the dawn of a new electronic publishing age, and prestigious newspapers like the New York Times could take the lead in establishing fair compensation for new media rights. This case represents an opportunity to establish fair electronic freelance usage fees. Emily Bass, of New York's Gaynor & Bass, who represented some of the freelance writers, has said that a negotiated global settlement would be the best outcome. The National Writers Union has offered a solution for acquiring permissions and making payments through its Publication Rights Clearinghouse, a transaction-based system run together with the Copyright Clearance Center that can digitally process permissions payments. The Authors Register, a non-profit run by the Authors Guild, is yet another organization that is able to calculate electronic use fees and reimburse authors accordingly.
This is not rocket science--this is a new world, and the Times could be leading the way. Instead, it continues to spit on freelancers, deleting their works from the Nexis database unless the writers relinquish any claim to payment.
"What I would hope would happen is that representatives of the writers will go back and forth with representatives of the publishers to come up with a standard agreement that's fair to everyone," says Daniel W. McDonald, a partner who heads the litigation group at Minneapolis's Merchant & Gould. Mr. McDonald submitted a brief on behalf of the American Intellectual Property Law Association for the freelancers. He says that now is the time to determine good relationships and fair ground rules. Both, frankly, are rare in the publishing world, which is not known for its people skills or fair contracts. The aftermath of Tasini, says Mr. McDonald, "could turn the light on about what's effective, and put moral pressure on the publishers to do the right thing."
But lawyers like Mr. McDonald are rare in corporate circles. The Times has old-fashioned lawyers with closed, old-fashioned minds. Nowadays the Times imposes restrictive contracts on freelancers that force writers to turn over their copyrights to the newspaper, trying to preserve a power structure between publisher and writer that has been eroded by the Internet. "Visionary lawyering" is not a phrase that comes to mind when thinking of the New York Times' legal counsel.
But publishers might have to hire better lawyers. In a case handed down a month after Tasini, Random House v. Rosetta Books, 01 Civ. 1728 (SDNY July 11, 2001), Judge Sidney H. Stein found that the right to publish a work in book form (on paper) does not include the right to publish digital versions of the work or "e-books." So, in a variation of Tasini, Random House has to rethink its 40-year-old publishing agreements. They could perhaps take the lead in establishing fair ground rules with authors, since the New York Times is apparently uninterested in the role.
Let me address some of the concerns raised by the foes of the Tasini decision who are concerned or outraged that the Supreme Court actually upheld the copyright rights of freelance writers to their works.
1. "We can't PAY all freelancers for electronic rights--we can't figure out which articles are which--we'd have to go back to the beginning of time to sort through which articles were submitted by freelancers!"
I call this "The New York Times is incompetent" argument. And I don't believe it, and neither does the New York Times.
I believe the Times just doesn't WANT to pay freelancers for electronic publication rights, even though doing so would help the Times' readers have access to an uncensored database, burnish the Times' reputation, and actually increase the money the Times earns when people access materials in its database. Ironically, the Times has probably already paid far more in legal fees fighting this case up to the Supreme Court than it ever owed the freelancers.
The burden of filtering out freelance articles electronically is not onerous. You could do a sophisticated search for writers employed by the Times, run that electronically through the database, and then go through the balance of the articles--and voila! you've isolated the freelance articles. Your basic title search in any New York real estate transaction is tougher, since so much of it is on paper. This is purely an electronic task. Young lawyers do these kinds of searches and mindless tasks, usually in a paper-based world, several times a month, usually while wondering why they went to law school if all they were going to do was sort through paper.
So much for the administrative incompetence argument. The argument that it is too financially burdensome on newspapers to pay freelancers fairly is weak on two grounds. First, many publishers have long done handled permissions and payments without problem. Thomson's West Group, one of the largest legal publishers, with a huge electronic database, is relatively unaffected by Tasini. "The number of affected materials is quite minimal for us," says John Shaughnessy, director of corporate communications for Thomson Legal and Regulatory.
The publisher has always requested permission to reprint articles from their print publications in their electronic databases and has gotten them. Authors want their works to appear online; the publisher wants them to appear, to offer a richer service to readers; and readers want access to as many works as possible. What's the problem, other than negotiating the price? Don't lawyers negotiate prices in far more complex situations? "Ultimately, the end game is to have good relations and to provide access to that information to our customers," says Mr. Shaughnessy. "Authors want their work to be accessible. Good lawyering probably nets the best possible results for all parties here."
Good lawyering for the publishers in Tasini is scarce, so far. In contrast to West, Reed Elsevier's Lexis-Nexis (a party to the Tasini lawsuit) has followed the Times like a dog and not even tried, so far, to work out a fair compensation scheme. Instead, it has deleted many freelance works from its database, weakening the depth of its service to its subscribers. But it's not too late. The copyright plans proposed by the National Writers Union or the Authors Guild are concrete mechanisms to allow the newspapers to work out payment plans--most writers want their works to appear in Nexis, and most readers want access to the complete works.
Even with the old-world lawyering of the Times, the financial and administrative burdens are not great. After 1995 (the Tasini suit was filed in 1993), the Times accepted freelance articles only after the author explicitly surrendered all rights, including the copyright. So, since electronic databases only began to be widely used in the early 1980s, the archive of freelance articles that the Times published electronically without permission is only about 15 years old--1980 through 1995.
But if someone tried to assert his or her rights to an article from the early 1980s, the publishers could argue that the writer had slept on his or her rights, using a legal doctrine called laches, and narrow the scope of the articles for which they have to pay to within five years or so. They'd have a reasonably good case, says Mr. McDonald. "There's a compelling case for the publishers to say, 'We've been relying on their silence and [implied] agreement. We've built our business around it, judge, and yanking all the articles will be difficult and expensive and time-consuming.' I think a lot of judges will find that a persuasive defense."
Actually--and I don't know why I'm helping the publishers out here-- the statute of limitations on copyright claims is three years. So the Times could leave up everything dated more than three years ago and not face any legal liability. A freelancer trying to assert rights to payment could be statutorily barred.
Instead, the Times has already yanked the articles from its online, Web-based archive. (There goes the administrative difficulty argument--they removed those articles right away!) Worse, "the newspaper of record" lied about why they did it. On June 25, in a news story about the case, the Times gave freelancers two numbers to call.
When you dial the numbers, a recorded message, citing the Supreme Court decision, says that the Times is "obliged" to remove freelance articles from electronic archives. Of course, the decision didn't oblige the paper to do anything of the sort. It obliged them to ask permission to republish the works online. But that's not all. Writers were then told that, if they want to keep their material in the Times' electronic archives, they must sign a contract, available on the Web or by mail, granting the Times the rights to reprint the articles, for no further compensation. PLUS the writers had to release the Times from any claims for compensation in the future. I'm sure many people signed away their rights.
The Times' idiocy, from a public relations standpoint, of bullying freelancers--many of whom are, after all, the Times' own readers and customers--is a symbol of the old-fashioned lawyering that the Internet is bringing down. The Times simply doesn't want to invest in the transaction cost to negotiate with the writers. Its attitude is a symbol of the arrogance of old-world publishers towards writers and towards the business world, both of which are changing.
Says Mr. McDonald, "The reality of the business world is that there are deadlines and informal relationships that dominate, at the expense of not dotting i's and crossing t's," so even the prospect of negotiating a fair contract is beneath the Times. Their lawyers advise that it's better to turn the New York Times archives into Swiss cheese than to redress grievances and establish fair practices towards freelancers in the future.
2. "But the historical record will be turned into Swiss cheese!"
This is crap, to use the legal term. The Times, and Lexis-Nexis, are under no legal obligation to delete articles from their electronic databases. They are required to ask permission, and to pay people fairly. If they are unwilling to do so, they themselves are taking the cyber-scissors to their archives, of their own free will.
If the publishers don't want to pay, and don't think people will consent to allow their work to circulate electronically, Barbara Quint, a librarian who writes frequently about online research for Information Today, has many suggestions. There is no copyright protection for headers or basic factual information, so the Times could keep the historical record complete online, by retaining the information about the article's publication--title, author, date, first two sentences--but making the article itself available only via microfilm. Ms. Quint warns, however, that by deleting articles entirely, the publishers are cutting off their noses to spite their faces:
If people come to find commercial sources unreliable, if addicts of the free and open Web find that services to which they pay top dollar cannot deliver what they have promised, if uncertain users seeking the comfortable security of an established brand-name publication find that publication cannot even maintain a reliable inventory of their own archives. Well, how long before disenchanted, disillusioned (or should we say re-illusioned) users decide that they could do just as well floating across the Web picking up information as they go? If the New York Times' own Web site has lost all its book reviews, then why not use the ones you find on Amazon.com written by 'real people,' Amazon's customers? If the full-text collections of DIALOG and LexisNexis and Factiva and ProQuest and Gale Group's Infotrac keep getting smaller and smaller and the reliability of retrieval spottier and spottier, then why pay high rates? In fact, why sign up for subscription contracts at all? For 'hit-or-miss' service, why not pay hit-or-miss usage-based charges?
She is not advocating poor archives, and neither am I. She is pointing out that it's not just the writers who have an interest in seeing their work circulate electronically. The publishers' short-sighted attitude, in deleting articles, hurts their commercial interests significantly more than the payments demanded by freelancers. Judge for yourself: there will probably be a hearing on damages in the autumn.
3. "Tasini was a Pyrrhic victory."
Going forward in the wake of Tasini, many people think that the freelancers lost more than they gained: publishers will require freelancers to turn over all rights, including the copyright, and to name their first born "Rumpelstilskin." But this assumes that freelancers were sitting pretty before. They were treated like dirt, and they were ignorant of their rights. Now, they'll be able to assert their rights.
Even Bruce Keller, a lawyer from Debevoise & Plimpton who advised the Times, says, "This decision doesn't affect the 'business as usual.' The good freelancers are always able to separately negotiate deals that they find acceptable. Nothing has changed." But now more freelancers can negotiate sweeter deals, as people start publishing their works on their personal Web sites, for example.
Freelance photographers have long enjoyed a privileged status relative to freelancers, even though their rights are identical. Most publications buy first-time publication rights only (the photographers rarely shoot for free, unlike writers who write for free). After that, if the newspapers wants to reprint the photo, they negotiated with the photographer. (The National Geographic learned that when it reprinted photographs on CD-ROM and was quickly sued--photographers are much savvier about their rights than the disorganized masses of freelancers). As media proliferate beyond Nexis and CD-ROMs, and as more people develop personal and professional Web sites, there's potentially more money to be made, and shared. The pie has grown much larger.
"Electronic rights are hugely valuable," says Mr. Keller. Tasini was about "a core set of right that are exercised by publishers primarily in research markets. That research market has not expanded terribly or dramatically despite the presence of microfilm. There are now custom-tailored publications, syndication rights, Web publication rights." The need for content perhaps changes the bargaining power in favor of the writer, so perhaps the world will establish a new equilibrium. If it is possible to treat freelance photographers fairly, why isn't it possible to do so for freelance writers?
In the short term, restrictive, New York Times-like contracts will proliferate. Gradually, the finest freelancers will insist on different terms, and the landscape will change--first for the best writers, then for all.
The fairest contract would allow one party to keep the copyright and give the other a perpetual license to reprint the work, in whole or in part, in any medium now existing or yet to be invented. The newspaper gets first-time publication rights, and the work can freely circulate after a certain amount of time. Sadly, the Times probably won't go this route--it is too arrogant to give up any of its rights, or to appear to do so--so other newspapers can take the lead.
These newspapers may be located outside the United States. The Tasini decision, points out Martin H. Samson of Phillips Nizer Benjamin Krim & Ballon, is squarely in line with foreign decisions from countries whose copyright laws have long valued creative or artistic rights. See, for example, Union Syndicale des Journalistes Francais v. SDV Plurimdia (T.G.I., Strousbourg, Fr., Feb. 3, 1998), ... S.C.R.L. Central Station v. Association Generale des Journalistes Professionnels de Belgique (CA, Brussels, Belg., 9e ch., Oct. 28, 1997) ... Heg v. De Volskrant B.V. (Dist. Ct., Amsterdam, Neth., Sept. 24, 1997). The U.S. Supreme Court decision lists far more. As the United States starts to bring its copyright laws in line with Europe's, artists' and writers' rights may improve.
Bradford P. Lyerla, an attorney with the Chicago intellectual property firm Wallenstein & Wagner, notes that the publishers' attitude in Tasini is nothing new. Whenever creation and ownership of a work can be separated, these problems arise. On the eve of the twentieth century, interest in jazz was just beginning, and music publishers descended on New Orleans and got musicians to sign over the rights to their songs. They were mostly young black musicians with no access to legal representation, explains Mr. Lyerla. Then radio came along. Did the rights to publish the song on paper extend to the new wireless medium, or not? The publishers, as in Tasini, said yes. The courts said no. If the author agreement is anything less than unambiguously clear, the author retains the right to the work in the new media, says Mr. Lyerla. It restores some balance to the agreement, which is usually between one individual author and a large corporation.
Tasini, like all great court cases, educated many people about their rights. Proof?
Steven Brill, the old publisher of the American Lawyer magazine-the one who used to charge freelancers a copyright fee for reprints of their own articles--set up a Web site, Contentville.com, where he at first tried to publish and sell works online when he didn't have the right to do so. This time, there was an outcry--from the newly-mobilized writers, enlightened by Tasini. Brill quickly backed down, and signed onto an electronic copyright payment plan pioneered by the National Writers Union. Even old dogs can learn new tricks in the Internet age, especially when writers know their rights, and are willing to speak up, aided by visionary lawyers, relying on plain ol' copyright law.