When Copyright First Met The Digital World: A Retrospective And Discussion Of New York Times v. Tasini, 533 U.S. 483 (2001)

Introduction

The U.S. Supreme Court's decision in New York Times v. Tasini, 533 U.S. 483 (2001), was an early ruling addressing the application of copyright law to the then nascent digital world. In Tasini, the Court ruled that freelance journalists retained copyrights for their individual articles and that in the absence of written agreements, publishers could not license the simple text of such articles to computer databases (or for use on searchable CD-ROMs) without infringing the author's rights, if the articles were not presented as part of a collection of the publishers' work (such as a daily newspaper). In a broader scope, the ruling tilted the playing field more favorably toward writers and other content creators and increased copyright liability for publishers, broadcasters, and distribution platforms. In so doing, the decision helped generate a market shift where publishers carefully documented rights agreements with content creators-both retrospectively and prospectively-and led to the modern-day rights-and-clearances departments for many news media legal departments, which maintain and police those agreements while also clearing the rights to use third-party content.

Thus, while much of the factual scenario and technology addressed in the Tasini decision-handshake or oral agreements with content creators, searchable text-only databases, CD-ROMs, etc.-may now seem antiquated, Tasini remains a cornerstone of modern copyright law as the first Supreme Court decision to grapple with easy republication of print content in a digital format. As a result, while Tasini's immediate impact on litigation was limited, the decision remains instructive for laying bare the tension between the need to adequately incentivize and reward content creators, the benefits of public access, and the competing economic positions between content creators and publishers and a sometimes ambiguous Copyright Act. Recent innovations, such as "embedding," provide a fresh battleground for these tensions, requiring courts to determine the appropriate balance-as established by the Copyright Act-between an author's control over the display of their works and the technical realities of the web, which allow anyone to view the author's original copy with just a few lines of code and the appropriate web address, all without ever copying the work in the traditional sense. But as with Tasini, decisions regarding the Copyright Act's default rule are just the first step in the analysis-how markets react and adjust to those default rules are just as, and sometimes more, important in determining the rights and obligations of private parties.

On January 29, 2021, a panel of Tasini litigants and media industry lawyers and professionals¹ discussed how the case arose and unfolded, explored the decision's legacy for the modern media lawyer, and discussed the evolving world of rights, clearances, and copyright infringement in a digital world. This article and the below discussion served as a historical primer on the Tasini  decision and highlights the issues covered by the panel.

Background

The Inherent Tension in the Aims of Copyright Law

The U.S. Constitution gives Congress "the Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. Const., art. I, § 8, cl. 8.

Thus, in enshrining copyright law in the Constitution, copyright protection is given to content creators for a limited time as an economic incentive to produce and disseminate their work into the marketplace for the public's benefit. There is an inherent tension in these twin purposes, for while the Supreme Court has stated, "[t]he primary objective of copyright is not to reward the labor of authors, but '[t]o promote the Progress of Science and useful Arts,'" Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991) (citations omitted). The Supreme Court has also consistently acknowledged that "encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors. . . . Sacrificial days devoted to such creative activities deserve rewards commensurate with the services rendered." Mazer v. Stein, 347 U.S. 201, 219 (1954). And Congress has tried to balance these competing purposes in numerous copyright statutes, including the Copyright Act of 1976 (the Act) at issue in Tasini.

The Copyright Act of 1976 and Ownership and Transfer of Copyright

Under the Act, copyrights are granted to original works of authorship in any fixed, tangible medium of expression. Today, copyright inheres as soon as a work is written or recorded. The author of the work is the original owner of the copyright. The copyright owner is granted a bundle of exclusive rights including the right to reproduce the work, distribute copies, create derivative works, publicly perform the work, and display the work. Each exclusive right is divisible from the others and, therefore, independently transferable. A transfer of one or all of these exclusive rights is valid only if conveyed in writing and signed by the copyright owner.

Before passage of the Act, copyright was a single, indivisible right (the Doctrine of Indivisibility). When an author transferred copyright, in whatever form, everything went with it, and the author was left with nothing to transfer to anyone else. See, e.g., G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F.2d 469 (2d Cir. 1951). Under this regime, failure of the author to reserve any rights created a presumption of copyright ownership in favor of the publisher of the work, and thus freelance authors lost their copyrights when their articles were included in collective works such as newspapers if there is no written agreement addressing the issue.

While the Doctrine of Indivisibility could work in the author's favor if the author retained his or her rights by written agreement, the Doctrine of Indivisibility was criticized as being unfair to authors, as one misstep by an author could lead to a complete surrender of ownership in his or her copyright. The Act effectively rendered the Doctrine of Indivisibility obsolete by granting owners a "bundle of rights," as set forth in section 106 of the Act:

17 U.S.C. § 106. In section 201(d), the Act clarified that each of these rights is separate and may be individually transferred:

Id. § 201(d).

Collective Works

A "collective work" is a work, such as a periodical, newspaper, or anthology, in which a number of contributions, constituting separate and independently copyrightable works, are assembled into a collective whole. Section 103 of the Act addresses the scope of protections for "compilations," making clear that the copyright in a compilation "extends only to the material contributed by the author":

Id. § 103.

To address the criticism of the Doctrine of Indivisibility vis-à-vis collective works, Congress enacted the Act's Contributions to Collective Works provision, section 201(c), with the below comment in the legislative history:

H.R. Rep. No. 94-1476, at 122. And section 201(c) states:

17 U.S.C. § 201(c). Thus, when a freelance writer contributes a story to a newspaper or magazine, the copyright in the contributed article rests initially with the author, while the publisher acquires copyright in the collective work (e.g., the newspaper or magazine) in its entirety. Unless the freelance author has expressly transferred any of the "bundle of rights" that form the copyright in the underlying contribution, the publisher has only copyright to the collective work and the "privilege" of reproducing the work as "revision" in certain circumstances. Id.

To clarify what Congress intended when it gave the publisher the right to use the author's work as part of "any revision of that collective work, and any later collective work in the same series," Congress gave this guidance in the House Report accompanying the 1976 legislation:

H.R. Rep. No. 94-1476, at 122-23.

Therefore, section 201 of the Act gives the publisher the right to use the contribution in that particular publication, in revisions to the publication, and in later publications in the same series. The full meaning and scope of the term "revision," however, remained unclear and led to the Tasini case discussed below.

The District Court Ruling in Tasini v. New York Times (S.D.N.Y.)

Factual Background

The plaintiffs in Tasini v. New York Times Co., 972 F. Supp. 804, 806 (S.D.N.Y. 1997), were six freelance writers who sold articles to the New York Times, Newsday, and Sports Illustrated [the publisher defendants or publishers] between 1990 and 1993. The publishers, meanwhile, each had agreements with Mead Data Corporation, then owner of NEXIS, and University Microfilms, Inc. (UMI), under which the publishers transmitted to NEXIS and UMI the contents of their publications. Id.  NEXIS, the news and periodicals section of LEXIS-NEXIS, paid the publishers for transfer of the contents of their publications. Id.  at 808. NEXIS customers would then pay and subscribe to NEXIS for the privilege of searching its database for articles on a particular subject. Id.  The New York Times also transmitted its contents to UMI, which produced "The New York Times on Disc" (NYTO) and "General Periodicals on Disc" (GPO). Id.  The writers brought suit in the U.S. District Court for the Southern District of New York against print and electronic publishers for copyright infringement when their articles were included in electronic databases without their express authorization. Id.  at 806.

The district court judge assigned to the case was Judge Sonia Sotomayor, now a justice on the U.S. Supreme Court. Per the decision granting summary judgment to the defendant publishers, "as of the time this action was commenced, freelance assignments for The New York Times were typically undertaken pursuant to verbal agreements reached between the newspaper and the contributing journalists." Id.  at 807. "A New York Times editor and a selected freelance writer ordinarily agreed upon such matters as the topic and length of a particular piece, the deadline for submission, and the fee to be paid. . . . [T]here were no such negotiations between the New York Times and any of the plaintiffs, all of whom submitted their articles for publication by the New York Times without any written agreements." Id. As to Newsday, its freelance assignments "were most often undertaken pursuant to discussions between editors and writers and without any written agreements." Id.

As to the defendant publishers' relationship with the databases, the district court found that "[b]eginning in the early 1980s, the defendant publishers entered into a series of agreements pursuant to which they sold the contents of their periodicals to the electronic defendants." Id. As to the mechanics of the transmittal, the publishers transmitted the full text of all of the articles appearing in each daily or weekly edition of their periodicals. Id.  at 808. NEXIS, however, only used the contents of each article for online display along with information like the author's name, the publication name, and the page on which each article appeared. Id. NEXIS did not reproduce the physical layout of each periodical, omitting photographs, advertisements, and the column format of the newspapers when converting the file into the NEXIS database. Id.

The Parties' Arguments

The crux of plaintiffs' claim was that by providing the text of the periodicals to the electronic databases, the defendant publishers infringed the plaintiffs' copyrights in the articles they had licensed to the publishers. Id. at 809. In the main, plaintiffs argued that because the writers had not expressly transferred an exclusive right to the publishers, the privileges acquired by the publishers were limited to those granted under section 201(c); specifically, publishing the stories in their respective publications, revisions to those publications, and in any later editions of those publications-but not making them available individually in an electronic database. Id. First, plaintiffs argued that transferring the contents of the publications to an electronic format is not a "revision" to the collective work under the Act. Id. Second, plaintiffs argued that the right to sell the articles to a third-party electronic database was never expressly transferred and therefore presumptively retained by the authors. Id.  at 815.

The defendant publishers raised two counterarguments. Id.  at 809. First, they maintained that transferring the contents of the periodical to an electronic format was within the meaning of a "revision" as provided for in section 201(c). Id.  Second, they argued that Congress did not intend to limit the privileges a publisher acquired under section 201(c) to specific media or to the medium used by the original publication. Id.

The case therefore, as analyzed by the district court, presented two principal copyright questions: First, did the transfer of the entire contents of a collective work into an electronic database amount to a "revision" of the collective work under section 201(c)? Second, if so, could the publisher of the collective work transfer the publisher's privilege to make that revision to a third party?

The District Court's Decision

The district court granted summary judgment in favor of the defendants, ruling section 201(c) shielded the defendant publishers from liability because the transfer of the magazine and newspaper contents into electronic databases was a "revision" under section 201(c) of the Act. Id.  at 816.

The court reviewed the scope of the copyright afforded to the publishers in a collective work under the Act, noting first that a collective work "consists of numerous original contributions which are not altered, but which are assembled in an original collective whole." Id. at 812. Under section 103(b), the district court reasoned, the writer retained the copyright in the preexisting work, and "any unauthorized use of preexisting material by the creator or a derivative or a collective work infringes the copyright existing in that preexisting material." Id. at 814. The court continued, however, and found that section 201(c) expanded section 103(b)'s "baseline" by conveying "the privilege of reproducing and distributing the contribution as part of that collective work, any revision of the collective work, and any later collective work in the same series" to the creators of collective works. Id. (citing 17 U.S.C. § 201(c)).

As to the scope of the defendants' privilege as creators of a collective work, the district court found the "revision" privilege was transferable, included display rights, and need not be in the same medium as the original, agreeing with the publishers that Congress did not intend for the Act to exclude any new or developing media but intended instead that the Act adopt a stance of "media neutrality." Id. at 816-18. Therefore, the district court concluded that the mere transfer of the collective work into an electronic database did not constitute an infringement. Id.  at 819.

Next, the district court considered whether the particular database versions of the defendants' collective works were "revisions" within the meaning of section 201(c). Id.  at 819-20. First, the court noted that there is little originality in the compilation of a collective work, and thus the publishers cannot "place plaintiff's articles in 'new anthologies' or 'entirely different magazine[]s or other collective works', but only into revisions of those collective works in which plaintiffs' articles first appeared." Id. at 821 (citing H.R. Rep. No. 94-1476, at 122-23 (1976)). Moreover, the court noted that the publishers could not, under the Act, "change the original selection and arrangement of their newspapers or magazines" or risk creating a new work not subject to the privileges afforded by section 201(c). Id. "Thus, in whatever ways they change their collective works, defendants must preserve some significant original aspect of those works-whether an original selection or an original arrangement-if they expect to satisfy the requirements of Section 201(c)." Id.

Further, the court reasoned that the originality in a collective work such as a newspaper or magazine is found in the selection and arrangement of the individual articles that constitute the publication. Id.  at 822. Despite the fact that a newspaper deposited in NEXIS loses the photographs, page layout, death notices, classified ads, and other distinguishing features, the court found this satisfied section 201(c) on the facts before it: "By retaining the publisher defendants' original selection of articles [] the electronic defendants have managed to retain one of the few defining original elements of the publishers' collective works. In other words, NEXIS and UMI's CD-ROMs carry recognizable versions of the publisher defendants' newspapers and magazines. For the purposes of Section 201(c), then, defendants have succeeded at creating 'any revision[s]' of those collective works." Id.  at 825.

Finally, the court addressed the impact of the publishers transferring the contents of their publications to third parties (NEXIS and UMI) who make them available for searching and readable in a single-article format. Id.  at 826. Rejecting the plaintiffs' argument that the "privileges" afforded the publishers under section 201(c) amounted to unallowable "non-exclusive licenses," the court ruled that the privilege granted to the publisher defendants under section 201(c) was one of the subdivisions of rights that Congress contemplated in drafting section 201(d)(2) and that under the second sentence of section 201(d)(2), that right is transferable to the electronic defendants. Id.  at 826-27.

Tasini Reaches the Second Circuit

The freelance authors appealed, and the Second Circuit reversed the district court in Tasini v. New York Times Co., 206 F.3d 161 (2d Cir. 2000). The Second Circuit held that, absent an express transfer of rights, section 201(c) does not permit collective-work authors to license individually copyrighted works for inclusion in open search electronic databases.

The Parties' Arguments

On appeal, as below, the authors claimed the copyright owned by each respective author in his or her individual articles was infringed when the publishers provided the articles to the various electronic databases. Id.  at 165. The authors presented two main arguments: (1) section 201(c) of the Act protects only the publishers' initial inclusion of individually copyrighted works in their collective works and does not permit the inclusion of individually copyrighted works in one or more of the electronic databases and (2) any privilege the publishers have under section 201(c) is not a transferrable "right" within the meaning of section 201(d) and therefore may not be invoked by the electronic database providers.² Id. Also as below, the publishers argued they owned the copyright in the "collective works" and are afforded the privilege, under section 201(c) of the Act, of "reproducing and distributing" the individual works in "any revision of that collective work," which included the electronic databases at issue. Id.

Framework of the Decision

In determining whether the electronic databases may be considered a "revision" of the individual periodical issues from which the articles were originally taken, the court first reviewed the plain language of section 201(c). Id.  at 166. In so doing, the court ruled that any presumptive privilege granted to a "collective-work" author to use the individually copyrighted contributions under section 201(c) is limited to the reproduction and distribution of the individual contribution as outlined in section 201(c). Id.  As explained by the Second Circuit, the first clause of section 201(c) sets a floor of the presumptive privilege, the second clause expands these rights to permit the reproduction and distribution of the individual contribution as part of a "revision" of "that collective work," and the third clause sets the "outer limit or ceiling" on what the publisher may do by permitting the reproduction and distribution of the individual contribution as part of a "later collective work in the same series." Id.  at 167.

The court then considered the meaning of the term "revision" and noted that "[t]he most natural reading of the 'revision' of 'that collective work' clause . . . protects only later editions of a particular issue of a periodical, such as a final edition of a newspaper." Id.  The Second Circuit reasoned that if "contents of an electronic database are merely a 'revision' of a particular 'collective work,' . . . the third clause of Section 201(c) . . . would be superfluous" and violate fundamental rules of statutory construction in affording meaning to every word, clause, or sentence. Id.

Next, the Second Circuit cautioned that the "permitted uses set forth in Section 201(c) are an exception to the general rule that copyright vests initially in the author of the individual contribution." Id.  at 168. In so doing, the Second Circuit noted that the publishers' broad reading of "revision of that collective work" would "cause the exception to swallow the rule." Id.  Under the publishers' theory, whether an electronic database infringes upon an author's article would turn upon whether the accompanying articles from the collective work that was published could also be retrieved individually. Id.  In rejecting the publishers' argument, the court reasoned that section 201(c), however, would not permit a publisher to sell a hard copy of an author's article directly to the public even if the publisher also offered for individual sale all of the other articles from the particular edition. Id.

Moreover, the Second Circuit found the publishers' arguments to be contrary to the protections of the Act. Id.  Section 201(d) of the Act expressly permits the transfer of less than the entire copyright, reserving the exclusive rights to themselves. Id.  If the permissible uses under section 201(c) were as broad as the appellees contended, the court reasoned that "it is not clear that the rights retained by the Authors could be considered 'exclusive' in any meaningful sense." Id.

Finally, the Second Circuit disagreed with the district court on the issue of whether the electronic databases preserved enough of the characteristics of the respective collective works to be called revisions. Id.  The Second Circuit found NEXIS does almost nothing to preserve the copyrightable aspects of the publishers' collective works, "as distinguished from the preexisting material employed in the work." Id.  at 169. Further, any end user of NEXIS would have a hard time recapturing much of "the material contributed by the author of such [collective work]." Id.

As distinguished from NEXIS, UMI's NYTO contains articles from only one publisher, and GPO includes some image-based, rather than text-based, files. Id.  Nevertheless, the court concluded that the publishers' licensing of authors' works to UMI for inclusion in these databases is not within the section 201(c) revision provision. Id.  The court found, like NEXIS, if the republication is a "new anthology" or a different collective work, it is not within section 201(c). Id.

Tasini Reaches the Supreme Court

The Arguments

The Tasini defendant publishers appealed the Second Circuit's ruling, arguing that the Second Circuit erred in its interpretation of section 201(c) of the Copyright Act.

New York Times Co., Inc. v. Tasini, 533 U.S. 483, 488 (2001) (emphasis added).

Several amici curiae  filed additional briefs. In particular, the Authors Guild, Inc. and the American Society of Media Photographers, Inc. submitted briefs highlighting economic concerns for freelance authors.

The Authors Guild explained, "permitting unauthorized, uncompensated electronic re-uses will have an adverse effect on freelancers' economic interests, which should be of paramount concern to those who wish to protect the integrity of historical archives." Brief of Authors Guild, Inc. as Amicus Curiae at *8-9, New York Times Co., Inc. v. Tasini, 533 U.S. 483 (2001) (No. 00-201), 2001 WL 177047. Further, preventing authors from obtaining a share of the income from electronic reuses "would directly and substantially upset the Copyright Act's careful balance between encouraging the dissemination of knowledge and granting the market incentives needed to maintain a healthy store of knowledge." Id.  at *9.

Similarly, the American Society of Media Photographers, Inc. argued the intent of section 201(c) was to limit a publisher's exploitation of freelance authors' works to ensure the author of the work retained control over subsequent commercial exploitation of the individual work. Brief of Am. Soc'y of Media Photographers, Inc. as Amicus Curiae at 7, Tasini, 533 U.S. 483 (2001) (No. 00-201), 2001 WL 177046. The interpretation of section 201(c) advanced by the publishers would give them the right to exploit an article on a global scale immediately following its initial publication, and to continue to exploit it indefinitely. Id. at *4.

The Decision

In a 7-2 opinion authored by Justice Ruth Bader Ginsburg, the Supreme Court affirmed the Second Circuit's holding, reasoning that the republication of the articles independent of their original context violated the authors' copyrights in their individual contributions. Tasini, 533 U.S. at 488. In reviewing section 201(c), the Court held that the statutory privilege to republish contributions to a collective work is circumscribed to only three circumstances: (1) republishing "'that collective work' to which the author contributed her work," (2) publishing "any revision to that collective work," or (3) publishing "any later collective work in the same series." Id. at 496.

Id. at 497. The Court concluded, however, that none of the three circumstances identified in section 201(c) applied to the republications at issue.

The Court based its determination on how the republished articles were "presented to, and perceptible by, the users" of the databases to which they were uploaded. Id. at 499. Across all three databases at issue, the Court concluded the plaintiff's articles were presented "clear of the context provided either by the original periodical editions or by any revision of those editions." Id. In the case of two of the databases, "an article appears to a user without the graphics, formatting, or other articles with which the article was initially published." Id. at 500. In the third, the plaintiff's articles would appear with other materials appearing "on the same page or pages" as the article itself, "but without any material published on" the remainder of the original collective work. Id. Under such circumstances, the Court held that the databases failed to "perceptibly reproduc[e] and distribut[e] the article 'as part of' either the original edition or a 'revision' of that edition." Id. Further, even though users had the option of generating search results "consisting entirely of articles from a particular periodical edition," the Court concluded "the fact that a third party can manipulate a database to produce a non-infringing document does not mean the database is not infringing." Id. at 504.

The Court separately rejected the publishers' arguments that the "media neutrality" principle protected their republication of the articles. Id. at 502. Rather than converting the "intact periodicals (or revisions of periodicals) from one medium to another," the defendants presented users with "individual articles." Id. Accordingly, while the media neutrality protected the copyright in the works regardless of the medium in which they were fixed, here that principle protected the plaintiff's copyrights in the individually presented articles and not the defendant's rights to the collective works that they failed to convert and present as a collective work. Id. at 502.

The Dissent

Justice John Paul Stevens, joined by Justice Stephen Breyer, filed a dissent, disagreeing that a ruling for the defendants was inconsistent with the Copyright Act. Id. at 511 (Stevens, J., dissenting). In addition to securing freelance authors' copyrights in their contributions without separate notice or an unqualified transfer of rights, Justice Stevens cited legislative history indicating section 201(c)'s limitations were "primarily to keep publishers from 'revis[ing] the contribution itself or includ[ing] it in a new anthology or an entirely different magazine or other collective work.'" Id. at 508-09 (original emphasis) (quoting H.R. Rep. No. 122-23, 1976 U.S.C.C.A.N. 5659, 5738). As to the first, Justice Stevens concluded that the electronic republication of the periodicals did not have "any impact on the legal status of the copyrights of the [authors'] individual contributions." Id.

As to the second, Justice Stevens offered several justifications for his belief that the works were not published "in a 'new anthology or an entirely different magazine or other collective work.'" Id. at 511 (original emphasis) (quoting H.R. Rep. 122-23, 1976 U.S.C.C.A.N. 5659, 5738). Although he agreed with the majority that "the crucial inquiry is whether the article appears within the 'context' of the original collective work," he believed that the inclusion of various contextual information-such has headlines, bylines, types, and the sections and pages in which the articles originally appeared-was sufficient to bring the republications within section 201(c)'s privilege. Id. at 512. Thus, in contrast with the majority's application of the media neutrality principle, Justice Stevens maintained this transition between different forms of media, along with the accompanying changes to facilitate that transition, justified treating the republications as "revisions" under section 201(c). Id. at 514-16.

Aside from these arguments, Justice Stevens also expressed concerns about the effect the majority's ruling would have on public access to digital databases of past periodicals:

Id. at 520.

For its part, the majority generally dismissed these "dire predictions." Id. at 505-06 (Ginsburg, J., majority). Instead, citing cases that indicate "the goals of copyright laws are 'not always best served by automatically granting an injunction,'" the majority suggested that their decision still left open the option of market innovation to address the dissent's concerns:

Id. at 505-06.

Tasini Revisited: Different Mediums as Revised Collective Works

The Eleventh Circuit in Greenberg v. National Geographic Society, 533 F.3d 1244, 1251 (11th Cir. 2008), explained that the teachings in New York Times Co. v. Tasini, 533 U.S. 483 (2001), are twofold: (1) "revision" must include some element of "novelty or newness" and (2) "consideration of the context in which the contributions are presented is critical in determining whether that novelty is sufficient to defeat the publisher's § 201(c) privilege."

In Greenberg, Jerry Greenberg sued National Geographic Society (National Geographic) alleging National Geographic had infringed on Greenberg's copyrights by reproducing his photographs in "The Complete National Geographic" (the CNG)-a 30-disc CD-ROM set-the same print magazine issues that originally included Greenberg's photographs. Greenberg, 533 F.3d at 1247. The court, in applying Tasini  to the facts presented, found that the CNG uses the "identical selection, coordination, and arrangement of the underlying individual contributions as used in the original collective works." Id.  at 1252. In addition, "the content of the CNG is also in the same position as in the print versions," creating an end-user experience where the only difference from the print version is in the size and resolution of the photographs and text. Id.  Viewed altogether, Greenberg's photographs are preserved in the CNG and can only be viewed as part of the original collective works in which they appeared. Id.  at 1257.

Accordingly, the Greenberg court rejected Greenberg's argument that the CNG is not privileged "because new elements have been added to the original print publications of the [m]agazine." Id.  at 1255. The Eleventh Circuit cautioned: "If simply adding a new element to a collective work, such as an index, table of contents or a new foreword creates a 'new collective work' outside of the purview of § 201(c), then the 'revision' prong [of § 201(c)] is effectively nullified." Id. As a result, the court held the CNG to be a permissible reproduction of the National Geographic Magazine.

In almost an identical set of facts, in Faulkner v. National Geographic Enterprises Inc., 409 F.3d 26 (2d Cir. 2005), appellants consisted of freelance photographers and authors whose works were published in various issues of the National Geographic Magazine (Magazine). Id.  at 29. The photographs and writings were subsequently published in "The Complete National Geographic"-a digital collection of the past issues of the Magazine offering the end user the ability to search, view, and display certain pages of the issues. Id.  The CNG is produced through digital scanning where each issue of the Magazine was scanned two pages at a time into a computer system, preserving what a user would see if viewing on an open-page, paper version of the Magazine. Id.

The Faulker  court held, "because the original context of the Magazines is omnipresent in the CNG and because it is a new version of the Magazine, the CNG is a privileged revision." Id.  at 38. Citing to the Supreme Court's decision in New York Times Co. v. Tasini, the Second Circuit noted a "revision" necessarily indicates a "new version." Id.  The CNG effectively presents an electronic replica of the pages of the Magazine, preserving the elements of the original collective work. Id. As a result, the section 201(c) privilege extends to the CNG. Id.

Market Reactions, Old Lessons, and New Issues: Are Embedding Cases Following Tasini's Trajectory?

After the Tasini decision, publishers responded by negotiating the rights for digital publication, and it became "common practice for publishers to own the digital articles they publish." Jaclyn Peiser, It Took 17 Years: Freelancers Receive $9 Million in Copyright Suit, N.Y. Times (Apr. 30, 2018), https://www.nytimes.com/2018/04/30/business/media/freelancers-digital-copyright-lawsuit.html. Thus, while the plaintiff authors prevailed in Tasini, the market corrected by publishers getting the proper rights by contract, and led to the rights-and-clearances departments now a part of many news media company's legal departments.³

The pattern that played out in the aftermath of Tasini-that of private actors grafting alternative contractual arrangements on top of the Copyright Act's default rule-appears to be repeating itself with respect to the online embedding of copyrighted works. Embedding is a technical process that

Sinclair v. Ziff Davis LLC, 454 F. Supp. 3d 342, 343 (S.D.N.Y. 2020) (citations omitted). As it pertains to copyright liability, however, embedding presents a series of difficult questions: Does embedding a copyrighted image violate the copyright holder's exclusive rights when no new copy is made? Who is "displaying" the copyrighted image-the copyright holder who made it accessible on their own servers, or the embedder who provides digital instructions to access it? Is embedding the image from the copyright holder's server materially different from simply providing a hyperlink to the same?

The Server Test

Despite never actually using the word "embedding" (instead referring to "in-line linking" and "framing"), the Court of Appeals for the Ninth Circuit considered these issues in Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2008), ultimately deciding that in-line linking to a full-sized, copyrighted image stored on the copyright holders' server did not violate section 106(5)'s exclusive right to display the copyrighted work or section 106(3)'s distribution right. Id. at 1159-63. Perfect 10, Inc. contended that the appearance of its copyrighted images in search results on Google Images infringed its exclusive rights under the Copyright Act. Id. at 1159. The images appeared on Google Images in two forms: a thumbnail version created by Google used in the actual search results and the full-resolution images that Google Images, through embedding, framed on its website when users clicked a thumbnail search result. Id. at 1157.

In resolving these questions, the Ninth Circuit focused its analysis on the location of the copies being displayed and distributed to users. The Ninth Circuit observed that the Copyright Act's definition of display means "to show a copy of it, either directly or by means of a film, slide, television image, or any other device or process. . . ." Id. at 1160 (quotations omitted) (quoting 17 U.S.C. § 101). In turn, "copies" means "material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Id. at 1160 (quotations omitted) (quoting 17 U.S.C. § 101). Applying what is known as the "server test," the Ninth Circuit concluded that Google's embedded framing of the full-resolution images did not violate Perfect 10's display right:

Id. at 1160-61. Similarly, with respect to the alleged infringement of Perfect 10's distribution right, the Ninth Circuit determined that "Google's search engine communicates HTML instructions that tell a user's browser where to find full-size images on a website publisher's computer, but Google does not itself distribute copies of the infringing photographs." Id. at 1162. In contrast, with respect to the thumbnail images that Google stored on its own servers, the Ninth Circuit concluded that Perfect 10 had stated a prima facie case that Google Image's use of the thumbnails violated its exclusive display rights.⁴ Id. at 1160.

The Server Test Loses Traction

More recently, some courts have expressed skepticism toward the Ninth Circuit's "server test," especially any broad readings of Perfect 10 that would "stand for the proposition that inline linking can never cause a display of images or videos that would give rise to claim of direct copyright infringement. . . ." Flava Works, Inc. v. Gunter, 2011 WL 3876910, at *4 (N.D. Ill. Sept. 1, 2011) (emphasis added), rev'd on other grounds, 689 F.3d 754 (7th Cir. 2012). In Goldman v. Breitbart News Network LLC, 302 F. Supp. 3d 585 (S.D.N.Y. 2018), the Southern District of New York went so far as to outright reject the "server test" as it pertains to section 106's exclusive display right.

Although it addressed similar arguments stemming from embedding issues, Goldman involved slightly different factual circumstances than in Perfect 10. In the case of Goldman, the copyright holder uploaded a photograph of Tom Brady to SnapChat. Id. at 586-87. Thereafter, the image went viral, and several users uploaded the photograph to Twitter. Id. at 587. The defendants then embedded the Tweets containing the image on their website, prominently featuring the photograph in articles related to Brady. Id. Whereas Perfect 10 only displayed the full-resolution images upon a user's decision to click on and open a display window in Google's search results, however, the full-sized, copyrighted image in Goldman  was visible to anyone visiting the defendants' webpages without further user input. See id. at 588, 595-96.

Rather than relying solely on these factual distinctions to distinguish Perfect 10, the Goldman court instead went a step further, holding Perfect 10  to be inconsistent with "[t]he plain language of the Copyright Act, the legislative history undergirding its enactment, and subsequent Supreme Court jurisprudence. . . ." Id. at 593. Reviewing the text of the Copyright Act, the Goldman court concluded, "[n]owhere does the Copyright Act suggest that possession of an image is necessary in order to display it." Instead, the Goldman  court held that because "defendants actively took steps to 'display' the image"-including the act of simply pasting the embedding instructions into the code of the webpage-it fell within the Copyright Act's definition of "display," which broadly encompasses the use of "any device or process" to display a work. Id.  at 593.

Id. at 594. The Goldman  court further emphasized the Copyright Act's legislative history, which indicated Congress sought to "include each and every method by which images . . . comprising a . . . display are picked up and conveyed . . . ." Id. (quotations omitted.)

The Goldman court also indicated that the Supreme Court's decision in American Broadcasting Cos., Inc. v. Aereo, Inc., 573 U.S. 431 (2014), may have undermined the foundation of the earlier Perfect 10 case, concluding that copyright liability may not be avoided "based upon purely technical distinctions," particularly "invisible technological details" that mean nothing to the end user. Goldman, 302 F. Supp. 3d at 594.

The Goldman court consequently rejected the server test. Toward the opinion's conclusion, the court in Goldman noted it was unswayed by the defendants' policy concerns that such a ruling would "radically . . . transform the Internet as we know it," noting that numerous other defenses to copyright liability could apply even in the absence of the server test:

Id. at 596.

Social Media Sublicenses in the Embedding Era

Regardless of whether the Goldman court correctly predicted that the server test would not increase the number of "viable" claims in an era of mass sharing and embedding of online content, the court was at least partially correct that the rejection of the server test is not the end of the inquiry.

This turned out to be precisely the case in Sinclair v. Ziff Davis, LLC, 454 F. Supp. 3d 342 (S.D.N.Y. 2020), another dispute regarding embedding copyrighted images. The facts follow a familiar pattern: The plaintiff uploads a copyrighted image online (here, to Instagram) and then sues when the defendant (Mashable) embeds that image on its webpage, in this case after requesting but failing to obtain a license from the plaintiff. Id. at 343-44.

Unlike Goldman, however, Instagram secured, through its terms of service, "a non-exclusive, fully paid and royalty-free, transferable, sub-licensable, worldwide license to the Content" its users post, subject to users' ability to make their accounts "private" under the Privacy Policy. See id. at 345. In turn, Instagram permits third parties to embed publicly posted Instagram content using Instagram's Application Programming Interface (API). Id. "Thus," the Sinclair court concluded, "because Plaintiff uploaded the Photograph on Instagram and designated it as 'public,' she agreed to allow Mashable, as Instagram's sublicensee, to embed the Photograph in its website." Id.

As was the case with Tasini, markets have already begun to adjust to the ruling in Goldman. And, as also was the case with Tasini, the content creator's initial victory in the courts may not result in materially different behavior outside the courts, as the market forces trend toward increased access to copyrighted information rather than the opposite. Regardless, shifting away from the default rules of the Copyright Act need not be considered a unilateral loss for copyright holders. The same entities who benefit from the widespread dissemination of content on their platforms also benefit from having quality content for individuals to disseminate and, in turn, quality creators to generate such content. A contract-based model of embedding-by-license using platform-provided APIs, for example, allows for innovation competition that a per se rule may not. For example, while the terms of service in Sinclair presented a bilateral choice-public or private-there is nothing in Sinclair that would prevent the development of tools to make posts public while also deactivating API-based embedding, or creating a permissions-based system in which the content poster can turn off API-embedding generally but still provide permission on a selective basis.

Conclusion

As discussed above, New York Times v. Tasini is a seminal decision in the application of copyright law to digital content, and its impact is felt today in very practical terms.

Footnotes

1. The authors would like to thank the panel members, whose insights and work made this article possible: Ken Richieri, former General Counsel, the New York Times; Jonathan Tasini, freelance journalist, workinglife.org, and named plaintiff in New York Times v. Tasini; Mickey Osterreicher, General Counsel, National Press Photographers Association; Miranda Hafford, Director, Global Rights, at A+E Networks; and Pilar Keagy Johnson, Assistant General Counsel, WarnerMedia News & Sports.

2. The Second Circuit did not address the question as to whether any privileges granted to collective-work authors are transferrable under section 201(d).

3. The resolution of the Tasini plaintiffs' monetary claims, and the post-Tasini settlement of a class action copyright infringement lawsuit brought by freelance authors against publishers regarding electronic publication of those authors' articles, is beyond the scope of this article. See, e.g., In re Literary Works in Electronic Databases Copyright Litigation, 509 F.3d 116 (2d Cir. 2007). Suffice to say, the litigation was long and eventful, and was not fully resolved until 2018. See generally Peiser, It Took 17, supra; $9 Million Is Paid to Freelance Writers in 17-Year-Old Copyright Suit, The Authors Guild (Apr. 30, 2018), https://www.authorsguild.org/industry-advocacy/9-million-paid-freelance-writers-17-year-old-copyright-suit; Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (discussing history of the class action litigation and settlement). As to articles in the New York Times database, the New York Times announced that it would allow individual authors to request that the Times continue to make all their works digitally available on the condition that the authors release all legal claims against the Times and its database licensees. See Felicity Barringer, Freelancers Suing Again on Copyright, N.Y. Times (July 6, 2001), https://www.nytimes.com/2001/07/06/business/freelancers-suing-again-on-copyright.html (noting provision in the New York Times offer to authors stated, "should you opt to have your work restored, you agree that you will not be compensated and that you will release the Times from any claims relating to your work appearing in electronic archives such as Nexis.").

4. The Ninth Circuit separately determined using those thumbnails as "a pointer directing a user to a source of information" was a fair use. Id. at 1163-68.

Originally Published by American Bar Association - Communications Lawyer.

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