Tasini v. New York Times Co.

• Decision Date: 13 August 1997
• Docket Number: No. 93 Civ. 8678(SS).,93 Civ. 8678(SS).
• Citation: 972 F.Supp. 804
• Parties: Jonathan TASINI, Mary Kay Blakely, Barbara Garson, Margot Mifflin, Sonia Jaffe Robbins, and David S. Whitford, Plaintiffs, v. The NEW YORK TIMES CO., Newsday Inc., Time Inc., The Atlantic Monthly Co., Mead Data Central Corp., and University Microfilms Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

972 F.Supp. 804

Jonathan TASINI, Mary Kay Blakely, Barbara Garson, Margot Mifflin, Sonia Jaffe Robbins, and David S. Whitford, Plaintiffs, v. The NEW YORK TIMES CO., Newsday Inc., Time Inc., The Atlantic Monthly Co., Mead Data Central Corp., and University Microfilms Inc., Defendants.

No. 93 Civ. 8678(SS).

United States District Court, S.D. New York.

August 13, 1997.

Emily M. Bass, Burstein & Bass, New York City, for Plaintiffs.

Bruce P. Keller, Lorin L. Reisner, Thomas H. Prochnow, Debevoise & Plimpton, New York City, for Defendants.

OPINION AND ORDER

SOTOMAYOR, District Judge.

In this action, the Court is called upon to determine whether publishers are entitled to place the contents of their periodicals into electronic data bases and onto CD-ROMs without first securing the permission of the freelance writers whose contributions are included in those periodicals. According to the Complaint, filed by a group of freelance journalists, this practice infringes the copyright that each writer holds in his or her individual articles. The defendant publishers and electronic service providers respond by invoking the "revision" privilege of the "collective works" provision of the Copyright Act of 1976, 17 U.S.C. § 201(c). Defendants maintain that they have not improperly exploited plaintiffs' individual contributions, but that they have permissibly reproduced plaintiffs' articles as part of electronic revisions of the newspapers and magazines in which those articles first appeared. For the reasons to be discussed, the Court agrees with defendants, and grants summary judgment in their favor.

BACKGROUND

Plaintiffs are six freelance writers who have sold articles for publication in a variety of popular newspapers and magazines, including The New York Times, Newsday, and Sports Illustrated. The first two of these periodicals, published respectively by defendants The New York Times Company and Newsday, Inc., are daily newspapers widely circulated to subscribers and newsstands. Sports Illustrated, published by the defendant Time, Inc. ("Time"), is a weekly magazine featuring articles and commentary of particular interest to sports enthusiasts. In addition to circulating hard copy versions of their periodicals, the defendant publishers sell the contents of their publications to the remaining defendants — University Microfilms Inc. (now called UMI Company ("UMI")) and The MEAD Corporation (now called LEXIS/NEXIS ("MEAD")) — for inclusion in assorted electronic data bases.¹

MEAD owns and operates NEXIS, an online, electronic, computer assisted text retrieval system in which articles from a number of leading newspapers, newsletters, magazines, and wire services — including The New York Times, Newsday, and Sports Illustrated — are displayed or printed in response to search requests from subscribers. (Pl.s' Mot. Summ. J. Ex. 49 at MO 1464.) UMI produces and distributes two CD-ROM products identified by plaintiffs in their Amended Complaint. One of these products, "The New York Times OnDisc," operates in much the same manner as NEXIS, and is made up of the articles appearing in each issue of The New York Times. The remaining CD-ROM, "General Periodicals OnDisc," provides a full image-based reproduction of The New York Times Book Review and Sunday Magazine.

Plaintiffs move for summary judgment on their claims of copyright infringement contending that the electronic reproductions of their articles are improper under the Copyright Act. Defendants Time and Newsday move for summary judgment on the ground that plaintiffs entered into contracts authorizing these publishers to sell plaintiffs' articles to the electronic defendants. All of the defendants argue that, even in the absence of such agreements, dismissal of this action is warranted because the publisher defendants properly exercised their right, under the Copyright Act, to produce revised versions of their publications.

A. The Parties' Relationship

The six plaintiffs claim that defendants infringed their copyrights in a total of 21 articles sold for publication between 1990 and 1993. Twelve of these articles, written by plaintiffs Tasini, Mifflin, and Blakely, appeared in The New York Times. Another eight of the articles, by plaintiffs Tasini, Garson, Whitford, and Robbins, were featured in Newsday. The remaining article, a piece entitled "Glory Amid Grief" by plaintiff Whitford, appeared in an issue of Sports Illustrated. All of the plaintiffs wrote their articles on a freelance basis, and not as employees of the defendant publishers.

1. The New York Times

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. 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. (Keller Dec. Ex. B2.) These discussions seldom extended into negotiations over rights in the commissioned articles. Indeed, there 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.² Id.

2. Newsday

Prior to this action, Newsday solicited its freelance contributions in much the same manner as did The New York Times. Freelance assignments for Newsday were most often undertaken pursuant to discussions between editors and writers and without any written agreements. (Keller Dec. Ex. B2.) However, the checks with which Newsday paid freelance writers for their contributions, including those checks sent to plaintiffs following the publication of their articles, included the following endorsement:

Signature required. Check void if this endorsement altered. This check accepted as full payment for first-time publication rights (or all rights, if agreement is for all rights) to material described on face of check in all editions published by Newsday and for the right to include such material in electronic library archives.

(Pl.s' Mot. Summ. J. Ex. 47.) Plaintiff Tasini crossed out this notation prior to cashing those checks paying him for his two disputed submissions to Newsday. Those plaintiffs who wrote the remaining six Newsday articles cashed their checks with the notation intact.

3. Sports Illustrated

Only plaintiff Whitford submitted an article for publication in Sports Illustrated. The relationship between Time and Whitford was decidedly more formal than the arrangements routinely entered into between freelance writers and Newsday or The New York Times. Whitford and Sports Illustrated entered into a written contract specifying the content and length of the purchased article, the date due, and the fee to be paid by the magazine. The contract also provided Sports Illustrated "the following rights":

(a) the exclusive right first to publish the Story in the Magazine:

(b) the non-exclusive right to license the republication of the Story whether in translation, digest, or abridgement form or otherwise in other publications, provided that the Magazine shall pay to you fifty percent (50%) of all net proceeds it receives for such republication: and

(c) the right to republish the Story or any portions thereof in or in connection with the Magazine or in other publications published by The Time Inc. Magazine Company, its parent, subsidiaries or affiliates, provided that you shall be paid the then prevailing rates of the publication in which the Story is republished.

(Keller Dec. Ex. C7.) Plaintiff Whitford claims that he did not intend, by this language, to grant Time electronic rights in his article. (Pl.s' Mot. Summ. J. Ex. 14.)

B. The Technological Reproductions

Beginning 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. NEXIS has carried the articles appearing in Sports Illustrated since 1982, The New York Times since 1983, and Newsday since 1988. (Keller Dec. Ex. B5 at ¶¶ 3, 4, 8.) UMI has distributed "The New York Times OnDisc" since 1992, and The New York Times Magazine and Book Review have been available on the image-based CD-ROM since 1990. (Keller Dec. Ex. B6 at ¶¶ 3, 8.)

1. NEXIS

The defendant publishers deliver or electronically transmit to NEXIS the full text of all of the articles appearing in each daily or weekly edition of their periodicals. The publishers provide NEXIS with a complete copy of computer text files which the publishers use during the process of producing the hard copy versions of their periodicals. Coded instructions as to page lay out added to these files permit typesetters working for the publishers to produce "mechanicals" — which resemble full pages as they will appear at publication — copies of which are transmitted to printing facilities for mass production. NEXIS does not use the electronic files to create "mechanicals" or to emulate the physical lay out of each periodical issue: such things as photographs, advertisements, and the column format of the newspapers are lost. NEXIS instead uses the electronic files to input the contents of each article on-line along with such information as the author's name, and the publication and page in which each article appeared. The articles appearing in The New York Times and Newsday are available within twenty-four hours after they first appear in print, and the articles from an issue of Sports Illustrated appear on-line within forty-five days of the initial hard copy publication.

Customers enter NEXIS by using a tele-communications package that enables them to access NEXIS' mainframe computers. Once on-line, customers enter "libraries" consisting of the articles from particular publications, or groups of publications. Customers can then conduct a "Boolean search" by inputting desired...