No. 00-201 

IN THE 

Supreme Court of the United States 
Supreme Court of the United States 

_______________________________ 

ON WRIT OF CERTIORARI TO THE 

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT 

Counsel Press LLC 

(800) 274-3321 • (800) 359-6859 

THE NEW YORK TIMES COMPANY, INC.; NEWSDAY, INC.; 
THE TIME INCORPORATED MAGAZINE COMPANY; LEXIS/ 
NEXIS and UNIVERSITY MICROFILMS INTERNATIONAL, 

Petitioners, 

v. 

JONATHAN TASINI; MARY KAY BLAKELY; BARBARA 
GARSON; MARGOT MIFFLIN; SONIA JAFFE ROBBINS 
and DAVID S. WHITFORD, 

Respondents. 

BRIEF FOR PETITIONERS 

LAURENCE H. TRIBE 

Counsel of Record 
JONATHAN S. MASSEY 

Hauser Hall 420 
1575 Massachusetts Avenue 
Cambridge, MA 02138 
(617) 495-4621 

BRUCE P. KELLER 
JEFFREY P. CUNARD 
MICHAEL R. POTENZA 
PETER C. JOHNSON 
DEBEVOISE & PLIMPTON 
875 Third Avenue 
New York, NY 10022 
(212) 909-6000 

THOMAS C. GOLDSTEIN 
THOMAS C. GOLDSTEIN, P.C. 
4607 Asbury Place, NW 
Washington, DC 20016 
(202) 237-7543 

Attorneys for Petitioners 

164314 

i 

QUESTION PRESENTED 

Are reproduction and distribution of a periodical in 
electronic form, as well as in print, privileged under Section 
201(c) of the Copyright Act or does electronically publishing 
the same content infringe upon the copyrights held by 
contributing freelance authors? 

ii 

STATEMENT PURSUANT TO RULE 29.6 

Petitioner The New York Times Company states that it 
has no corporate parents, and that no publicly held company 
owns 10% or more of The New York Times Company’s 
stock. 

Petitioner Newsday Inc. states that The Tribune 
Company is its corporate parent, and that no other publicly 
held company owns 10% or more of Newsday, Inc.’s stock. 

Petitioner Time Inc., formerly known as the Time Inc. 
Magazine Company, states that Time Warner Inc. is its 
corporate parent, and that Time Inc. has no publicly traded 
stock. 

Petitioner University Microfilms Inc. states that Bell & 
Howell Co. is its corporate parent, and that no other publicly 
held company owns 10% or more of University Microfilms 
Inc.’s stock. 

Petitioner LEXIS/NEXIS (formerly known as Mead Data 
Central) states that LEXIS/NEXIS is a division of Reed 
Elsevier Inc., whose corporate parents are Reed International 
P.L.C. and Elsevier N.V., and that LEXIS/NEXIS has no 
publicly-traded stock. 

iii 

Cited Authorities 

Page 

TABLE OF CONTENTS 

Question Presented . . . . . . . . . . . . . . . . . . . . . . . . . . 
i 

Statement Pursuant to Rule 29.6 . . . . . . . . . . . . . . . . 
ii 

Table of Contents 
. . . . . . . . . . . . . . . . . . . . . . . . . . . 

iii 

Table of Cited Authorities 
. . . . . . . . . . . . . . . . . . . . 

vii 

Table of Citation Conventions Used In This Brief . . . . 
xiii 

Opinions Below 
. . . . . . . . . . . . . . . . . . . . . . . . . . . . 

1 

Jurisdiction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
1 

Statutory Provisions Involved . . . . . . . . . . . . . . . . . . 
1 

Statement of the Case 
. . . . . . . . . . . . . . . . . . . . . . . . 

1 

I. The Parties And Works At Issue In This 

Proceeding. . . . . . . . . . . . . . . . . . . . . . . . . . . 
3 

A. Petitioners And The “Collective Works” 

They Publish. . . . . . . . . . . . . . . . . . . . . . 
3 

B. Respondents And The Articles They 

Contributed. . . . . . . . . . . . . . . . . . . . . . . 
5 

II. The Relevant Statutory Provisions. . . . . . . . . 
6 

III. The District Court’s Decision Rejecting 

Respondents’ Copyright Infringement Claim. 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7 

iv 

Cited Authorities 

Page 

Contents 

IV. The Court Of Appeals’ Decision Finding 
Copyright Infringement. . . . . . . . . . . . . . . . . . 
11 

Summary of the Argument . . . . . . . . . . . . . . . . . . . . . 
14 

Argument . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
19 

I. Congress Intended Publishers To Continue To 

Be Able To Make Their Publications, And 
Any Revisions Of Them, Available To 
Researchers And The Public. 

. . . . . . . . . . . . 

19 

A. The Text Of The Copyright Act 

Establishes That The Electronic Copies 
In Dispute Are Privileged. . . . . . . . . . . . 
19 

1. The Phrase “Any Revision.” . . . . . . 
19 

2. The Act’s Uniformly Media-Neutral 

Provisions. . . . . . . . . . . . . . . . . . . . 
21 

3. The Second Circuit’s Flawed 

Textual Analysis. . . . . . . . . . . . . . . . 
25 

B. The Legislative History Also Establishes 

That Congress Did Not Intend To 
Interfere With Publishers’ Long- 
Recognized Rights To Reproduce And 
Distribute Their Publications. . . . . . . . . 
28 

1. The Legislative History Confirms 

The Breadth Of The “Any Revision” 
Language. . . . . . . . . . . . . . . . . . . . . 
28 

v 

Cited Authorities 

Page 

Contents 

2. Congress Was Aware, And Sought To 
Facilitate The Use, Of Computers And 
Electronic Copies. 

. . . . . . . . . . . . . 

34 

3. Congress Twice Rejected Legislation 

That Would Have Adopted 
Respondents’ Reading Of Section 
201. . . . . . . . . . . . . . . . . . . . . . . . . . 
37 

II. The Electronic Copies In This Case Are 

Privileged Under Section 201(c). . . . . . . . . . 
39 

A. Petitioners Sufficiently Preserve The 
“Selection” Of The Hard Copy Editions. 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

40 

B. Petitioners Sufficiently Preserve The 
“Arrangement” And “Coordination” Of 
The Hard Copy Editions. . . . . . . . . . . . . 
42 

III. The Second Circuit’s Contrary Analysis Also 

Should Be Rejected Because It Conflicts 
With Fundamental Copyright Principles. . . . . 
44 

A. The Decision Below Conflicts With This 

Court’s Analysis Of Direct Copyright 
Infringement In Sony. . . . . . . . . . . . . . . . 
47 

vi 

Cited Authorities 

Page 

Contents 

B. The Decision Below Conflicts With 

Congress’ Goal To Encourage The 
Development Of New Technologies And 
Will Result In Wholesale Deletion Of 
Freelance Contributions. . . . . . . . . . . . . 
48 

Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
50 

Appendix — Selected Provisions Of The Copyright 

Act Of 1976 
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

1a 

vii 

Cited Authorities 

Page 

TABLE OF CITED AUTHORITIES 

Cases: 

Alexander v. Irving Trust Co., 132 F. Supp. 364 
(S.D.N.Y.), aff’d, 228 F.2d 221 (CA2 1955), cert. 
denied, 350 U.S. 996 (1956) 
. . . . . . . . . . . . 17, 28-29 

Babbit v. Sweet Home Chapter of Communities for 
a Great Or., 515 U.S. 687 (1995) . . . . . . . . . . . . 16, 27 

Brecht v. Abrahamson, 507 U.S. 619 (1993) 
. . . . . 38-39 

CCC Info. Serv. v. MacLean Hunter Market Reports, 
44 F.3d 61 (CA2 1994), cert. denied, 516 U.S. 
817 (1995) 
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

25 

Community for Creative Non-Violence v. Reid, 
490 U.S. 730 (1989) . . . . . . . . . . . . . . . . . . . . . . . 
28 

Dole v. United Steelworkers of Am., 494 U.S. 26 
(1990) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
28 

Faulkner (Douglas) v. National Geographic Soc’y, 

No. 97 Civ. 9361 (S.D.N.Y.) . . . . . . . . . . . . . . . . . 
46 

Faulkner (Sally) v. National Geographic Soc’y, 

No. 99 Civ. 12488 (S.D.N.Y.) 
. . . . . . . . . . . . . . . 

46 

FEC v. Democratic Senatorial Campaign Comm., 
454 U.S. 27 (1981) . . . . . . . . . . . . . . . . . . . . . . . . 39 

viii 

Cited Authorities 

Page 

Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., Inc., 499 

U.S. 340 (1991) 
. . . . . . . . . . . . . . . . . . . . 7, 18, 24, 45 

Freytag v. Commissioner, 501 U.S. 868 (1991) . . . 15, 21 

FTC v. Mandel Bros., Inc., 359 U.S. 385 (1959) . . . 
22 

Garcia v. United States, 469 U.S. 70 (1984) . . . . . . 
27 

Geisel v. Poynter Prods., Inc., 295 F. Supp. 331 
(S.D.N.Y. 1968) 
. . . . . . . . . . . . . . . . . . . . . . 17, 29, 32 

Greenberg v. National Geographic Soc’y, No. 97- 
3924-civ (S.D. Fla.) . . . . . . . . . . . . . . . . . . . . . . . 

46 

Gustafson v. Alloyd Co., 513 U.S. 561 (1995) . . . . . 
22 

Harrison v. PPG Indus., Inc., 446 U.S. 578 (1980) 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15, 16, 21, 27 

Hirshon v. United Artists Corp., 243 F.2d 640 
(CADC 1957) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
29 

Jarecki v. G.D. Searle & Co., 367 U.S. 303 (1961) 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

27 

L. Batlin & Son, Inc. v. Snyder, 536 F.2d 486 (CA2), 
cert. denied, 429 U.S. 857 (1976) . . . . . . . . . . . . 
25 

Laney v. Dow Jones & Co., Inc., 00 Civ. 769 (D. Del.) 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14 

ix 

Cited Authorities 

Page 

Matthew Bender & Co. v. West Publishing, 158 F.3d 
693 (CA2 1998), cert. denied, 526 U.S. 1154 
(1999) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 47, 48 

Mills Music, Inc. v. Snyder, 469 U.S. 153 (1985) 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 20, 28, 34 

Pacific Gas & Elec. Co. v. State Energy Resources 

Conservation & Dev. Comm., 461 U.S. 190 
(1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
39 

Playboy Enters., Inc. v. Dumas, 53 F.3d 549 (CA2), 
cert. denied, 516 U.S. 1010 (1995) . . . . . . . . . . . 
32 

Posner v. Gale Group, Inc., 00 Civ. 7376 (S.D.N.Y.) 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

14 

Quality King Distribs., Inc. v. L’anza Research Int’l 

Inc., 523 U.S. 135 (1998) . . . . . . . . . . . . . . . . . . . 
26 

Robinson v. Shell Oil Co., 519 U.S. 337 (1997) . . . 
21 

Ryan v. Carl Corp., 23 F. Supp. 2d 1146 (N.D. Cal. 
1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
33 

Sony Corp. of Am. v. Universal City Studios, 464 

U.S. 417 (1984) 
. . . . . . . . . . . . . 19, 45, 47, 48, 49-50 

Stewart v. Abend, 495 U.S. 207 (1990) . . . . . . . . . 21, 28 

x 

Cited Authorities 

Page 

The Authors Guild, Inc. v. The Dialog Corp., 00 Civ. 
6049 (S.D.N.Y.) 
. . . . . . . . . . . . . . . . . . . . . . . . . . 

14 

Twentieth Century Music Corp. v. Aiken, 422 U.S. 
151 (1975) 
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

48 

United States v. Turkette, 452 U.S. 576 (1981) . . . 21, 27 

Statutes: 

17 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim 

17 U.S.C. § 102(a) 
. . . . . . . . . . . . . . . . . . . . . . . . . 16, 22 

17 U.S.C. § 103(b) 
. . . . . . . . . . . . . . . . . . . . . . . 7, 15, 19 

17 U.S.C. § 106(1) 
. . . . . . . . . . . . . . . . . . . . . . . . . . 

22 

17 U.S.C. § 106(3) 
. . . . . . . . . . . . . . . . . . . . . . . . . . 

22 

17 U.S.C. § 117 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
37 

17 U.S.C. § 201(b) 
. . . . . . . . . . . . . . . . . . . . . . . . . . 

7 

17 U.S.C. § 201(c) 
. . . . . . . . . . . . . . . . . . . . . . . . . passim 

17 U.S.C. § 201(d)(1) . . . . . . . . . . . . . . . . . . . . . . . . 

20 

17 U.S.C. § 201(d)(2) . . . . . . . . . . . . . . . . . . . . . . . . 
20 

17 U.S.C. § 203(b)(1) . . . . . . . . . . . . . . . . . . . . . . . . 20 

xi 

Cited Authorities 

Page 

17 U.S.C. § 304(c)(6)(A) 
. . . . . . . . . . . . . . . . . . . . . 

20 

18 U.S.C. § 1964(1) 
. . . . . . . . . . . . . . . . . . . . . . . . . 

27 

28 U.S.C. § 1254(1) 
. . . . . . . . . . . . . . . . . . . . . . . . . 

1 

Other Authorities* 

112 Cong. Rec. 24,066 (1966) 
. . . . . . . . . . . . . . . . . 

20 

CONTU Report . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
37 

Copyright Law Revision, Part 1 
. . . . . . . . . . . . . 6, 20, 29 

Copyright Law Revision, Part 2 

. . . . . . . . . . . . . . . 29, 30 

Copyright Law Revision, Part 3 

. . . . . . 17, 20, 30, 36, 40 

Copyright Law Revision, Part 5 

. . . . . . . . . . . . . . . 30, 31 

Copyright Law Revision, Part 6 

. . . . . . . . . 31, 34, 35, 36 

Robert C. Denicola, Copyright in Collections of 

Facts: A Theory for the Protection of Nonfiction 
Literary Works, 81 Colum. L. Rev. 516 (1981) . . . . 43-44 

H.R. 5911, 98 

th Cong., 2d Sess., 130 Cong. Rec. 
17,729 (1984) . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
38 

* References to legislative history correspond to the 
designations in the Table of Citation Conventions Used In This Brief 
listed infra at xiii-xvi. 

xii 

Cited Authorities 

Page 

H.R. Rep. No. 1476 
. . . . . . . . . . . . . . . . . . . . . . . . passim 

H.R. Rep. No. 2237 
. . . . . . . . . . . . . . . . . . 11, 26, 32, 33 

Hearings on H.R. 4347 
. . . . . . . . . . . . . . . . . . . 32, 35, 36 

Hearings on S. 597 
. . . . . . . . . . . . . . . . . . . . . . . . . . 

32 

Hearings on H.R. 2223 
. . . . . . . . . . . . . . . . . . . . . . . 

36 

Hearing on S. 2044 . . . . . . . . . . . . . . . . . . . . . . . . . . 
38 

Charles E. MacKenzie, Coded Character Sets, 

History and Development (1980) . . . . . . . . . . . . . 
4 

Pub L. No. 96-517 § 10(b), 96 

th Cong., 1 

st Sess., 94 

Stat. 3028 (1980) 
. . . . . . . . . . . . . . . . . . . . . . . . . 
37 

Michael Rogers & Norman Oder, U.S. News Pulls 

Microfilm Content, Library Journal, Oct. 1, 2000 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 

49 

st Sess., 129 Cong. Rec. 34,442 
(1983) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 
38 

S. 2138, 98 

th Cong., 1 

Matthew L. Wald, Reference Disks Speak Volumes, 

N.Y. Times, Feb. 26, 1998 
. . . . . . . . . . . . . . . . . . 

46 

Webster’s Third New Int’l Dict. (1968) . . . . . . . . . 15, 20 

xiii 

Cited Authorities 

Page 

TABLE OF CITATION CONVENTIONS 
USED IN THIS BRIEF 

For clarity and ease of reference, a number of short form 
citations to legislative materials have been adopted for use 
in this brief. 

Full Title of Source 
Short Form 

Statutes 

Copyright Act of 1976, codified 

“Act” or “1976 Act” 

at Title 17, U.S.C. 

Copyright Act of 1909, ch. 320, 

“1909 Act” 

35 Stat. 1075 (codified at former 
Title 17, U.S.C.), repealed by 
Copyright Act of 1976, Pub. L. No. 94-553, 
90 Stat. 2541 (effective January 1, 1978) 

Congressional Committee Reports 

H.R. Rep. No. 1476, 94th Cong., 
“H.R. Rep. No. 1476” 

2d. Sess. (1975), reprinted in 1976 

or “House Report” 

U.S. Code Cong. & Ad. News 5659 
(J.A. 682a-708a) 

H.R. Rep. No. 2237, 89th Cong., 
“H.R. Rep. No. 2237” 

2d Sess. (1966) (J.A. 658a-664a) 

xiv 

Cited Authorities 

Page 

Full Title of Source (cont’d) 
Short Form (cont’d) 

Hearings 

Copyright Law Revision: 

“Hearings on S. 1006” 

Hearings on S. 1006 Before the 

(J.A. 629a-631a) 

Subcomm. on Patents, Trademarks, 
and Copyrights of the Senate Comm. 
on the Judiciary, 89th Cong., 1st Sess. (1965) 

Copyright Law Revision: 
“Hearings on H.R. 4347” 

Hearings on H.R. 4347, 

(J.A. 632a-655a) 

H.R. 5680, H.R. 6831, H.R. 6835 
Before Subcomm. No. 3 of the 
House Comm. on the Judiciary, 
89th Cong., 1st Sess. (1965) 

Copyright Law Revision: 
“Hearings on S. 597” 

Hearings on S. 597 Before the 

(J.A. 665a-671a) 

Subcomm. on Patents, Trademarks, 
and Copyrights of the Senate Comm. 
on the Judiciary, 90th Cong., 1st Sess. (1967) 

Copyright Law Revision: 
“Hearings on H.R. 2223” 

Hearings on H.R. 2223 Before 

(J.A. 672a-681a) 

the Subcomm. on Courts, Civil 
Liberties, and Admin. of Justice 
of the House Comm. on the Judiciary, 
94th Cong., 1st Sess. (1975) 

Definition of Work Made for Hire 
“Hearing on S. 2044” 

in the Copyright Act of 1976: 

(J.A. 717a-730a) 

Hearing on S. 2044 Before the 
Senate Comm. on the Judiciary, 
97th Cong., 2d Sess. (1982) 

xv 

Cited Authorities 

Page 

Full Title of Source (cont’d) 
Short Form (cont’d) 

Copyright Law Revision Studies and Reports 

Report of the Register of 
“Copyright Law 

Copyrights on the General Revision 
Revision, Part 1” 

of the U.S. Copyright Law, 
(J.A. 543a-558a) 

87th Cong.,1st Sess., Copyright 
Law Revision (H. Judiciary Comm. 
Print 1961) 

Discussion and Comments on Report 
“Copyright Law 

of the Register of Copyrights on the 
Revision, Part 2” 

General Revision of the U.S. 
(J.A. 559a-576a) 

Copyright Law, 88th Cong., 1st 
Sess., Copyright Law Revision, 
Part 2 (H. Judiciary Comm. Print 1963) 

Preliminary Draft for Revised 
“Copyright Law 

U.S. Copyright Law and Discussions 
Revision, Part 3” 

and Comments on the Draft, 
(J.A. 577a-599a) 

88th Cong., 2d Sess., Copyright 
Law Revision, Part 3 (H., Judiciary 
Comm. Print 1964) 

1964 Revision Bill with Discussions 
“Copyright Law 

and Comments, 89th Cong., 1st Sess., 
Revision, Part 5” 

Copyright Law Revision, Part 5 
(J.A. 600a-617a) 

(H. Judiciary Comm. Print 1965) 

Supplementary Report of the Register 

“Copyright Law 

of Copyrights on the General Revision Revision, Part 6” or 
of the U.S. Copyright Law; 1965 
the “1965 Report” 

Revision Bill, 89th Cong., 1st Sess., 
(J.A. 618a-628a) 

Copyright Law Revision, Part 6 
(H. Judiciary Comm. Print 1965) 

xvi 

Cited Authorities 

Page 

Full Title of Source (cont’d) 
Short Form (cont’d) 

Final Report of the National 
“CONTU Report” 

Commission on New Technological 
(J.A. 709a-716a) 

Uses of Copyrighted Works 
(Library of Congress 1979) 

1 

BRIEF FOR PETITIONERS 

Petitioners The New York Times Co., Newsday Inc., 
Time Inc., University Microfilms Inc. and LEXIS/NEXIS 
respectfully request that this Court reverse the judgment of 
the Second Circuit in this matter. 

OPINIONS BELOW 

The district court’s opinion (per Sotomayor, D.J. (now 
circuit judge)) granting petitioners’ summary judgment 
motion (Cert. Petition App. (“Cert. App.”) 23a-80a) is 
published at 972 F. Supp. 804. The district court’s subsequent 
opinion denying reconsideration (Cert. App. 83a-105a) is 
published at 981 F. Supp. 841. The court of appeals’ opinion 
(per Winter, C.J., joined by Miner and Pooler, JJ.) reversing 
(Cert. App. 1a-22a) is published at 206 F.3d 161. The court 
of appeals’ orders denying rehearing and rehearing en banc 
(Cert. App. 106a-107a) and staying its mandate (id. 111a- 
113a) are not otherwise published. 

JURISDICTION 

The court of appeals entered its opinion on September 
24, 1999, and denied rehearing and rehearing en banc on 
April 6, 2000. Justice Ginsburg subsequently extended the 
time to file a petition for a writ of certiorari to and including 
August 4, 2000. The petition, filed on August 4, 2000, was 
granted on November 6, 2000. This Court has jurisdiction 
pursuant to 28 U.S.C. § 1254(1). 

STATUTORY PROVISIONS INVOLVED 

The relevant provisions of the Copyright Act of 1976 
(the “Act”), 17 U.S.C. § 101 et seq., are reprinted in the 
appendix to this brief at 1a-13a. 

STATEMENT OF THE CASE 

This is a copyright case brought by freelance authors 
(respondents) against the publishers of a number of 
periodicals and their licensees (petitioners). Respondents 
contributed articles that appeared in the print editions and 
also in electronic copies of the publications. The case arises 
because respondents claim that the periodicals, when 

2 

published electronically, violate the copyrights in their 
individual contributions. 

These electronic versions or “copies”1 of the periodicals are 
the modern successors to microfilm and microfiche. 
They continue, in media that are now common and efficient, the 
long-standing practice of making periodicals available in formats 
especially well-suited for research purposes. Because 
completeness and editorial integrity are essential for research, 
these electronic “copies” contain the entire editorial content of 
the periodicals and, in many instances, are exact duplicates of 
the entire periodicals. When stored on a cumulative basis, they 
serve as vast library stacks that can be searched quickly and 
accurately. A few decades ago, a researcher would locate articles 
by first studying subject headings in the Reader’s Guide to 
Periodical Literature or The New York Times Index and then 
physically retrieving the hard copy in the stacks or the appropriate 
pages on microfilm or microfiche copies of the publications. Now, 
the identical research can be performed far more efficiently and 
successfully through electronic searches on a computer. 

The district court rejected respondents’ infringement claim 
based on a meticulous study of the text and legislative history 
of the Copyright Act. The district court held that the electronic 
copies were privileged under Section 201(c) of the Act, which 
permits publishers of “collective works,” such as periodicals, 
to reproduce and distribute freelance contributions as part of 
a periodical and “any revision” thereof. 

The Second Circuit reversed in a decision that conflicts 
with the plain text of Section 201(c), the structure and purpose 
of the Act and longstanding copyright principles. The particular 
electronic copies challenged in this case, which in many 
instances include exact duplicates of the original periodicals 
and in all instances include the original editorial content in its 

1. “Copies” are the “material objects” in which any copyrightable 
work, including the collective works at issue in this case, are “fixed,” 
that is, made “sufficiently permanent . . . to be perceived.” 17 U.S.C. 
§ 101 (defining “copies” and “fixed”). 

3 

entirety, fit squarely within the congressional grant to publishers 
set forth in Section 201(c). Congress enacted Section 201(c) to 
ensure the right of contributing authors to exploit their individual 
works, not to prevent publishers from reproducing or distributing 
original or revised editions of their periodicals. More generally, 
it intended to further, not impede, the development of easily 
accessible electronic libraries and to promote the widespread 
dissemination of copyrighted works for the public good. 

The Second Circuit’s contrary ruling turns this clearly 
expressed congressional intent on its head, because it will require 
the mass deletion of freelance contributions from those libraries, 
as well as the outright destruction of media, such as CD-ROM 
discs, that may contain such contributions. Congress intended 
precisely the opposite result. 

I. The Parties And Works At Issue In This Proceeding. 

A. Petitioners And The “Collective Works” They Publish. 
Petitioners are publishers and their licensees. The publishers 
produce a number of prominent newspapers and special interest 
magazines, including The New York Times (the “Times”), 
Newsday and Sports Illustrated (collectively, the 
“Publications”). The Publications are published in print form, 
on microfilm and microfiche and also electronically. The 
publishers hold copyrights in each issue or edition of their 
respective Publications. 

Petitioner LEXIS/NEXIS provides the NEXIS service. 
NEXIS is comprised of hundreds of libraries, each of which 
contains the contents of a periodical or periodicals.2 For example, 
NEXIS has contained libraries for the Times since 1983, 
Newsday since 1988 and Sports Illustrated since 1982. 
NEXIS contains the Publications’ complete editorial contents 

2. The information contained in the NEXIS service is stored 
on a series of large interconnected discs housed in computers, or 
servers. These devices function similarly to library stacks: When an 
end-user requests information from a particular library within the 
NEXIS system, the computer locates the information by referencing 
internal indexing codes, and then retrieves the information from the 
electronic “stacks” for the end-user. 

4 

— i.e., all of the articles, editorials, letters to the editor and 
similar materials — although not graphical materials (such 
as box scores or photographs and advertisements) and certain 
agate-type entries (such as paid death notices) that are 
incompatible with the limits of the ASCII-text format that 
was dominant when the libraries were originally created.3 

The NEXIS “search engine” permits users to search the 
libraries according to individualized criteria. End-users can 
retrieve either individual articles or (as the district court found) 
can “generate all of the articles — and only those articles — 
appearing in a particular periodical on a particular day.” Cert. 
App. 30a. When retrieved, a search result displays information 
regarding the hard copy edition of the publication in which 
each article appears, including the publication name, the date 
and the page number. 

The creation of the electronic copies of the Publications 
stored in these libraries mirrors the creation of the print copies. 
As the district court found, the “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.” Cert. App. 29a. Specifically, the same computer 
files are sent to NEXIS as are sent from the editorial desk to 
the printing facilities in order to print “the hard copy versions 
of their periodicals.” Id. These files contain the complete text 
of each day’s or week’s issue, including headlines, photograph 
captions, bylines and page, section and other references to the 
layout of the paper edition. Id.; Joint Appendix (“J.A.”) 471a- 
76a. Once received by NEXIS, these files are added to the 

3. ASCII (“American Standard Code for Information Interchange”) 
is a standard means for storing textual data that became prevalent in 
the 1960s. It assigns a unique 7-bit binary number for each upper- and 
lower-case letter, numeral, punctuation symbol and other character of 
the typewriter keyboard. Thus, by definition, it cannot be used for 
photographical information. Charles E. MacKenzie, Coded Character 
Sets, History and Development, 211-13 (1980). As technology evolved, 
other digital formats, such as the image-based format used for many of 
the copies in this case, have become common. 

5 

appropriate NEXIS electronic library in their entirety and 
without any intervening selection or revision to their 
substantive content. Cert. App. 29a. 

Petitioner UMI is the world’s largest producer of 
informational CD-ROM products, including The New York 
Times OnDisc (“NYTO”), a product that contains the same 
searchable ASCII-text information as the Times library in 
NEXIS. Pursuant to a three-way agreement among the Times, 
NEXIS and UMI, “NEXIS provides UMI with magnetic tapes 
containing . . . the same data furnished by the [Times] to 
NEXIS.” Cert. App. 30a. UMI then transfers these files, 
entirely and without revision, to CD-ROM discs. Id. As with 
NEXIS, end-users of the NYTO product may retrieve in its 
entirety the complete editorial content of any day’s edition 
of the Times. 

UMI also produces a second CD-ROM product, General 
Periodicals OnDisc (“GPO”), which contains exact duplicate 
images of entire copies of periodicals, including The New 

York Times Sunday Magazine and The New York Times Book 
Review. Complete copies of the printed editions of these 
periodicals are digitally scanned and “burned” onto CD- 
ROMs. Cert. App. 31a. As a result, “[a]rticles appear 
precisely as they do in print, complete with photographs, 
captions, and advertisements.” Id. GPO has a search engine 
that utilizes an accompanying abstract.4 

B. Respondents And The Articles They Contributed. 
Respondents are six freelance authors. Between 1990 and 
1993, they wrote twenty-one articles (collectively, “the 
Articles”) that were published in the Publications. 
No contract between any of the petitioners and respondents 
limits reproduction of the Articles to print copies of the 

4. Microfilm and microfiche copies of the Publications are 
created the same way as GPO: by photographically reproducing each 
hard copy page of the periodical. Instead of digitally converting that 
information, UMI fixes photographic negatives of the issues onto 
plastic film, which reproduces the image of the hard copy periodical 
when light is shone through it. 

6 

Publications or otherwise restricts electronic distribution.5 
In fact, each of the respondents admitted that no agreement 
limited petitioners’ rights to the print medium and that they 
had not, prior to filing this suit, objected to publication in 
other media, such as electronically or on microfilm. J.A. 486a- 
87a, 488a, 489a, 491a-92a, 495a-96a.6 Consequently, the 
Articles were included in both print and electronic copies of 
the Publications, together in the case of GPO with everything 
else that appeared in that particular edition or in the case of 
NEXIS and NYTO with the rest of the editorial content. 

Respondents hold copyrights in each of the Articles. 
They brought this suit asserting that petitioners, in the absence 
of a contract, obtained only “first, one time, North American 

print publication rights,” to their contributions and that, upon 
print publication, the petitioners’ right to include their Articles 
was “exhausted.” Compl. ¶¶ 32, 290, 368, 394, 446, J.A. 29a, 
38a, 44a-45a, 50a (emphasis added). Under their theory, the 
reproduction and distribution of the Publications in any 
non-print medium — including not only electronic libraries and 
CD-ROMs but also microfilm and microfiche — infringe 
respondents’ copyrights in the Articles. 

II. The Relevant Statutory Provisions. 

The Copyright Act distinguishes between the copyright in 
a periodical and that which exists in an individual contribution 
to the periodical. Periodicals are defined as “collective works,” 
which are a species of “compilation.” 17 U.S.C. § 101. Collective 
works are composed of various individual works, which can 

5. See Copyright Law Revision, Part 1, at 87, J.A. 556a 
(Section 201(c) governs when “there is no express agreement . . . as to 
the assignment of rights.”). 

6. Moreover, many of the respondents admitted to being familiar 
with and having used NEXIS, as well as microfilm, for some time before 
filing suit. J.A. 388a, 393a-94a, 449a-50a, 453a. Their lawsuit also 
followed, by over nine years, prior unsuccessful efforts by freelancers 
and others to convince Congress to limit publishers’ rights under Section 
201(c). See infra at 37-38. 

7 

be separately copyrighted. Id. 7 Under Section 103(b), 
“[t]he copyright in [a compilation] is independent of, and does 
not affect or enlarge the scope, duration, ownership, or 
subsistence of, any copyright protection in the preexisting 
material.” 17 U.S.C. § 103(b). In order to be entitled to this 
compilation copyright, a collective work must reflect a unique 
“selection, coordination, or arrangement.” Feist Publ’ns, Inc. v. 

Rural Tel. Serv. Co., Inc., 499 U.S. 340, 357 (1991). 

Individual authors always remain free to exploit their 
individual contributions whether or not a publisher has a 
copyright in the compilation. Under Section 201(c), however, 
publishers presumptively are privileged to reproduce and 
distribute individually copyrighted contributions in several 
respects: 

Copyright in each separate contribution to a 
collective work is distinct from copyright in the 
collective work as a whole, and vests initially in the 
author of the contribution. In the absence of an 
express transfer of the copyright or of any rights 
under it, the owner of copyright in the collective 
work is presumed to have acquired only the privilege 
of reproducing and distributing the contribution as 
part of [1] that particular collective work, [2] any 
revision of that collective work, and [3] any later 

collective work in the same series. 

17 U.S.C. § 201(c) (emphasis and numbering added). 

III. The District Court’s Decision Rejecting Respondents’ 
Copyright Infringement Claim. 

After extensive discovery, the district court framed the 
question on summary judgment as whether the electronic copies 
are privileged under Section 201(c), or, as the respondents 

7. Because staff writers (unlike freelancers) are employed by 
publishers, the publishers are deemed the “authors,” and hence the 
presumptive owners, of the copyrights in all staff-contributed articles. 
17 U.S.C. §§ 101 (defining works for hire), 201(b) (deeming employer 
the “author” of work made for hire). 

8 

maintain, “exploit plaintiffs’ individual articles” in an entirely 
separate periodical or “new anthology” and, therefore, infringe 
upon respondents’ copyrights. Cert. App. 17a, 32a-33a. 
The district court emphasized that a “plain reading” of the 
term “any revision” in Section 201(c) precluded respondents’ 
claim. Id. 58a. It rejected respondents’ view that “any revision” 
should be read narrowly to encompass only “new” or “up-to- 
date” versions of a prior work in the same medium in which 
the work originally appeared. Such a reading, the district court 
recognized, would be inconsistent with the plain meaning of 
the term “any revision”: 

Congress plainly intended to prevent publishers 
from reshaping or altering the content of individual 

articles. With this limitation in place, Congress 
apparently was willing to permit publishers 
significant leeway, i.e., the leeway to create “any 
revision” of their collective works. 

Id. 59a (emphasis added). The district court further rejected 
respondents’ proposed paper-only limitation as contrary to 
the media-neutral framework of the Act. Quoting from the 
legislative history on this very point, the court emphasized 
that the rights in the Act were “granted in such a way that they 
can be adapted as time goes on to each of new advancing 
media.” Id. 57a. 

The district court also reviewed the specific legislative 
history regarding Section 201(c) noting the many compromises 
brokered “through a unique and lengthy process involving the 
input of numerous experts from assorted interest groups and 
industries.” Cert. App. 41a. This history confirms the expansive 
scope that the ultimate compromise accorded to the “any 
revision” privilege. An early draft of Section 201(c) proposed 
allowing publishers to reproduce an individual contribution 
“as part of that particular collective work and any revisions of 
it.” Id. 59a. Focusing on the ambiguity of the word “it,” authors 
argued that “[i]f that means ‘any revision of the collective 
work’ in terms of changing the contributions, or their 

9 

order, or including different contributions, obviously the 
magazine writers and photographers would not object.” 
Id. 60a (quoting Harriet Pilpel, “a prominent author 
representative”) (emphasis added). Authors feared, however, 
that the clause as written might give publishers “a right to 
make revisions in the contributions to the collective work. 
This is not and should not be the law.” Id. 59a-60a (emphasis 
added). “In other words,” as the district court concluded, 
“authors were comfortable permitting publishers broad 
discretion in revising their collective works, provided that 
individual articles would remain intact.” Id. 

With this understanding of the “any revision” language 
confirmed by the Act’s text and legislative history, the district 
court next considered whether the electronic copies on 
NEXIS and the UMI CD-ROMs fell within the “any revision” 
privilege of Section 201(c). The court recognized that, 
notwithstanding the considerable breadth of the “any 
revision” clause, a revision still “must be recognizable as a 
version of a preexisting collective work if it is to be fairly 
characterized a revision of ‘that collective work.’ ” Cert. App. 
61a. Turning again to the statutory definitions in the Act, the 
district court reasoned that periodicals are compilations, 
defined as “work[s] formed by the collection and assembling 
of preexisting materials or of data that are selected, 
coordinated, or arranged in such a way that the resulting work 
as a whole constitutes an original work of authorship.” Id. 
62a; see also 17 U.S.C. § 101. Because this selection or 
arrangement is the essence of the collective work copyright, 
“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).” Cert. App. 63a. 

The district court found no genuine dispute over 
whether the original editorial selection of the Publications 
is retained in the electronic copies. That “selection remains 
evident online” because petitioners uniformly include 

10 

information identifying the publication, edition and even 
pagination of the hard copy edition in which each article 
originally appeared. Cert. App. 71a. Moreover, “there is no 
intervening original selection of articles that might render 
NEXIS or UMI’s CD-ROMs separate collective works.” 
Id. 70a n.13. The district court concluded that the failure to 
retain the exact arrangement as well as the entire selection 
reflected in a paper copy of a particular periodical is only of 
“peripheral concern,” because petitioners retain their single 
most important original contribution: their editorial selection 
of the individual articles to be published in any given hard 
copy periodical. Id. 72a-73a; see also id. 69a (“The New York 
Times perhaps even represents the paradigm, the epitome of a 
publication in which selection alone reflects sufficient 
originality to merit copyright protection. Identifying ‘all the 
news that’s fit to print’ . . . is a highly subjective undertaking, 
one that different editors and different periodicals undoubtedly 
perform with varying degrees of success.”). 

Because the court recognized that the editorial selection 
retained by petitioners in the electronic copies is substantially 
similar to the selection contained in the original paper copies, 
it concluded the electronic copies fit well within the broad 
“any revision” privilege of Section 201(c). Cert. App. 76a. 
The district court further reasoned that the differences between 
the electronic and print copies of the Publications — a loss of 
above-the-fold or below-the-fold placement, column 
formatting and agate-type entries — are precisely what makes 
the electronic copies “revisions,” as opposed to being “that 
collective work” itself under Section 201(c). Id. 73a-74a, 76a. 
These differences, moreover, are not even present on image- 
based CD-ROM products, which reproduce images of the 
Publications as they appear in print. Indeed, although the 
district court did not expressly address GPO, other than to 
note that “plaintiffs struggle[d] to explain their objections” to 
both it, id. 64a n.12, and microfilm, id. 50a n.7, GPO constitutes 
nothing more than a photographic transfer (just like microfilm) 

11 

of the Publications from hard copy to an electronic, CD-ROM 
medium. Thus, its reproduction and distribution also fall within 
Section 201(c)’s privilege for reproducing individual 
contributions as part of “that collective work.”8 

The district court rejected respondents’ contentions that 
its holding resulted in a windfall to publishers or left 
freelancers without any significant protection under Section 
201(c). Rather, as the district court recognized, respondents 
may, under Section 201(c), prevent any exploitation of their 
individual articles apart from the collective work in which 
they originally appeared. Cert. App. 77a. For example, the 
Times could not sell a freelance sports piece to Sports 
Illustrated, or rework that article into a short story, a television 
program or a movie.9 This fundamental distinction between 
individual copyrights and collective work copyrights reflects 
the essential congressional compromise embodied in Section 
201(c) and the economic reality that publishers have a legal 
and normative right to exploit the collective work that is the 
product of their authorship. 

IV. The Court Of Appeals’ Decision Finding Copyright 
Infringement. 

On respondents’ appeal, the Second Circuit reversed, 
holding as a matter of law that “Section 201(c) does not permit 
[petitioners] to license individually copyrighted works for 
inclusion in the electronic databases,” even if the entirety of 

8. See infra at 21-25 (explaining that change in medium does not 
change underlying work). 

9. In addition, because Section 201(c) creates only a presumption 
in favor of publishers, freelancers remain free to secure greater copyright 
protection by contract, provided they expressly carve back the Section 
201(c) default. Section 201(c) operates to permit publishers to republish 
a contribution in the three ways set forth “unless there has been an 
express transfer of more.” See H.R. Rep. No. 2237, at 117, J.A. 663a. 
For this reason, the contract entered into between petitioner Time Inc. 
and respondent Whitford, which did not explicitly alter the default 
§ 201(c) allocation, cannot change the result dictated by that section. 
The district court properly so concluded. Cert. App. 39a-40a. 

12 

each Publication is so licensed. Cert. App. 7a. It read the third 
clause of Section 201(c) (a “later collective work in the same 
series”) as setting “the outer limit” on the scope of “what the 
Publisher may do.” Id. 10a. The Second Circuit therefore 
reasoned that the second (“any revision”) clause must be read 
narrowly to permit reproduction and distribution only in less 
substantial revisions — those that are only “somewhat altered 
from the original,” id. 11a, whatever that might mean. 

The Second Circuit found that the electronic copies in 
this case could not fit within its narrow conception of the 
Section 201(c) privilege. It asserted, without any citation to 
the record, that petitioners “strip[]” individual issues of the 
Publications “into separate files representing individual 
articles,” which are then transmitted to the electronic copy 
licensees. Cert. App. 4a. The court also focused on the 
purportedly “substantial portion” of the Publications that 
are not transmitted to NEXIS, such as “formatting 
decisions, pictures, maps and tables, and obituaries.” Id. 

10 

Notwithstanding its acknowledgement that “individual articles 
are ‘tagged’ with data indicating the section and page on 
which the article initially appeared,” the Second Circuit 
focused on paper-specific aspects of the Publications’ 
arrangement that were not (because they could not be) 
displayed in ASCII-text format: i.e., “certain information 
relating to the initial page layout . . . , such as placement 
above or below the fold in the case of The New York Times.” 
Id. 

The Second Circuit relied heavily on an analysis of how 
end-users can retrieve or access particular information stored 
in the electronic libraries. It established the new legal 
principle that a publisher may be liable for direct copyright 

10. In fact, all of the editorial content, including obituaries, is 
reproduced in the electronic copies. Advertisements, including those 
in the form of paid death notices, are not. Such material is added after 
the editorial selection is made and transmitted to the printers. 
J.A. 197a-98a, 203a. 

13 

infringement (the theory advanced by respondents) simply 
by publishing electronic copies of periodicals that permit 
third parties to retrieve individual articles: 

Subscribers to NEXIS are able to access an almost 
infinite combination of articles from one or more 
publishers by using the database’s advanced search 
engine. The articles may be retrieved individually 
or, for example, together with others on like topics. 
Such retrieval makes the article available without 
any material from the rest of the periodical in 
which it first appeared. 

Cert. App. 4a. Similarly, the CD-ROM products “contain[] 
many articles that may be retrieved [through a search engine] 
according to criteria unrelated to the particular edition in which 
the articles first appeared.” Id. 16a. 

The Second Circuit believed that the ability of 
end-users to retrieve articles could not be reconciled with the 
Act in two respects. First, it maintained that such individually 
accessible electronic copies fail to retain the original 
“selection” of the print edition inasmuch as “the Authors’ 
works are now available to the public on one or more electronic 
databases and may be retrieved individually or in combination 
with other pieces originally published in different editions of 
the periodical or in different periodicals.” Cert. App. 6a-7a. 
The court concluded that such a process results in “at best a 
new anthology of innumerable editions of the Times, and at 
worst a new anthology of innumerable articles from these 
editions,” but not “a ‘revision’ of any (or all) particular 
editions.” Id. 17a. 

Second, it opined that the availability of individually 
accessible electronic copies itself infringes upon authors’ rights 
to exploit their individual contributions: 

Section 201(c) 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 

14 

particular edition. We see nothing in the revision 
provision that would allow the Publishers to 
achieve the same goal indirectly through NEXIS. 

Cert. App. 13a. Turning to the image-based GPO CD-ROM, 
the Second Circuit acknowledged that the editorial selection 
and arrangement of the paper copies are reproduced exactly 
as they are in other image-based media such as microfilm, 
but summarily opined that such image-based media also 
infringe because (as can be true of microfilm spools and 
microfiche sheets) they can contain articles from numerous 
other periodicals, rendering GPO “at best a new anthology.” 
Id. 17a. 

On April 26, 2000, the Second Circuit stayed its 
mandate upon a showing by petitioners, through undisputed 
sworn declarations, that the judgment below would cause 
irreparable injury both to petitioners and to the public. 
J.A. 15a, 526a-42a. In particular, the decision below will require 
publishers and electronic database companies nationwide to 
delete hundreds of thousands of electronically stored freelance 
news articles, book reviews, stories sent in by stringers, letters 
to the editor, Op-ed pieces and other materials. J.A. 532a. 
As the declarations explained, any suggestion that publishers 
and freelance authors could “contract around” the problem 
ignores the practical impossibility of locating and negotiating 
with tens of thousands of individual authors, their transferees 
in interest, and/or heirs, in the face of class action litigation 
regarding the use of articles already published in electronic 
copies. J.A. 535a, 542a. 

11 

SUMMARY OF THE ARGUMENT 

Petitioners’ reproduction and distribution of the electronic 
copies at issue are privileged under Section 201(c) of the 

11. Multiple class action and other complaints have been filed 
against publishers and their licensees based on the Second Circuit’s 
decision in this case. Laney v. Dow Jones & Co., Inc., 00 Civ. 769 
(D. Del.); The Authors Guild, Inc. v. The Dialog Corp., 00 Civ. 6049 
(S.D.N.Y.); Posner v. Gale Group, Inc., 00 Civ. 7376 (S.D.N.Y.). 

15 

Copyright Act. Petitioners’ copyrights in their collective 
works, see 17 U.S.C. § 103(b), entitle them to reproduce 
and distribute those works, a process that necessarily 
involves distributing the individual contributions. Congress 
accordingly provided in Section 201(c) that a publisher may 
reproduce and distribute individually copyrighted 
contributions as part of the original collective work or 
“any revision” thereof. In this case, the ASCII-text 
electronic copies in the NEXIS database and those on the 
NYTO CD-ROM qualify as “revisions” and the image-based 
copies (those on the GPO CD-ROM) also qualify as the 
original collective work. The Second Circuit’s view — 
that the electronic copies infringe because they combine 
multiple periodical issues into “new anthologies” and 
because they permit researchers quickly and efficiently to 
retrieve individual articles — conflicts with fundamental 
copyright principles, as is evident from the fact that it 
would invalidate longstanding, widespread applications of 
the Section 201(c) privilege to media such as microfilm 
and microfiche. 

I. The Act’s plain text establishes that the “any 
revision” privilege of Section 201(c) is broad and 
encompassing. The term “revision” contemplates 
substantial changes to the original work. E.g., Webster’s 

Third New Int’l Dict. 1944 (1968) (“revise” is “to make a 
new, amended, improved or up-to-date version,” including 
by “incorporating major revisions” (emphasis added)). 
Moreover, the Act privileges “any” revision of the 
collective work, a term of considerable breadth. E.g., 
Freytag v. Commissioner, 501 U.S. 868, 874 (1991); 

Harrison v. PPG Indus., Inc., 446 U.S. 578, 589 (1980). 

Moreover, the Act was purposefully drafted in media- 
neutral terms to facilitate the transfer of a work between 
paper and electronic copies. The Act provides both that a 
“work,” such as the collective works in this case, may be 
fixed in any medium “now known or later developed” and 

16 

that the “copies” reproduced and distributed by petitioners 
are the material objects, “in which a work is fixed by any 
method now known or later developed.” 17 U.S.C. §§ 101, 
102(a). Accordingly, petitioners’ publications are the same 
“works,” whether fixed in paper editions, photographed for 
microfilm, “burned” onto a CD-ROM or electronically copied 
to a computer server. 

The Second Circuit erred by ignoring the Act’s plain 
meaning, purporting instead to infer Congress’ intent from 
the structure of Section 201(c). It deemed the first clause of 
Section 201(c) (“that particular collective work”) a “floor” 
for the rights of publishers, the third clause (“any later 
collective work in the same series”) a ceiling, and the second 
clause (“any revision”) some sort of middle level between the 
other two. Other than that Section 201(c) has three clauses 
(also true of innumerable other federal statutes that never have 
been construed in this floor-to-ceiling manner), nothing 
supports this construction. All three clauses represent 
overlapping publishing practices familiar to Congress at the 
time of the Act’s adoption, and all were essential to the 
compromise between the interests of publishers and authors 
that Section 201(c) embodies. When the terms of a statute 
stand on their own and there is no indication that Congress 
intended those terms to limit each others’ scope, resort to the 
canons of construction applied by the Second Circuit is 
inappropriate. E.g., Harrison, 446 U.S. at 589 (ejusdem 
generis); Babbit v. Sweet Home Chapter of Communities for a 

Great Or., 515 U.S. 687, 702 (1995) (noscitur a sociis). 

II. The Copyright Act’s legislative history, recognized as a 
uniquely important interpretive tool in the context of the Act but 
essentially ignored by the Second Circuit, confirms that the 
electronic copies in this case are privileged. The legislative history 
makes plain that the essence of the Section 201(c) compromise 
was to preserve the rights publishers enjoy in their collective 
works in three particular ways, while allowing authors, for the 
first time, to retain rights to their individual contributions. 

17 

Under precedents interpreting the predecessor 
Copyright Act of 1909, authors had lost essentially all rights 
to their contributions submitted to publications, such as 
sequelization, novelization, screenplay and merchandise 
rights. E.g., Geisel v. Poynter Prods., Inc., 295 F. Supp. 331, 
334 (S.D.N.Y. 1968); Alexander v. Irving Trust Co., 132 
F. Supp. 364, 369 (S.D.N.Y.), aff’d, 228 F.2d 221 (CA2 
1955), cert. denied, 350 U.S. 996 (1956). Congress intended 
to correct this, expressly providing that publishers secure 
rights “only” with respect to their “collective works.” 

Consistent with authors’ right to exploit their individual 
works, Section 201(c) allows a collective work “revision” 
to include quite substantial changes. E.g., Copyright Law 
Revision, Part 3, at 261, J.A. 591a (statement of Bella Linden, 
publishers’ representative, leading to reformulation of 
Section 201(c) draft) (maintaining that publishers have the 
right to distribute “a volume containing only half of the 
material in ‘that particular collective work’ ”) (emphasis 
added). Importantly, the contrary view of some authors was 
considered but not adopted. Indeed, Congress subsequently 
twice considered but did not adopt proposals to amend 
Section 201 that would have provided freelance authors the 
relief that respondents seek here. 

Congress also was quite conscious of the development 
of electronic libraries similar to NEXIS, the predecessors of 
which already existed in the 1960s and 1970s and the 
expansion of which was accurately predicted by testifying 
witnesses. Congress plainly intended to facilitate, not 
impede, the development of such easily accessible electronic 
libraries. 

III. The petitioners’ electronic copies easily fall within the 
Section 201(c) privilege. The image-based electronic copies 
(those on the GPO CD-ROMs) are precisely the same “works” 
as the hard copy editions and thus qualify as “that collective 
work” under the Act’s media-neutral provisions. The Second 
Circuit’s conclusion that these copies, which are exact 

18 

duplicates of every page of the New York Times Book Review 
and Sunday Magazine, fall outside of Section 201(c) is 
inexplicable. 

The image-based copies, like the ASCII-text-based 
electronic copies (NEXIS and the NYTO CD-ROMs), also 
qualify as permissible “revisions” of the hard copy editions. 
The ASCII-text copies contain the entire editorial content of 
the periodicals, including all of the articles, features, letters 
to the editor and the like. All that is excluded are graphical 
materials (such as advertisements) and other agate-type 
materials that are incompatible with ASCII-text electronic 
libraries. Indeed, the publishers daily transmit to NEXIS the 
exact files used to print the hard copy editions of the 
Publications, without any intervening selection or 
modification to individual contributions, and electronically 
tag each file with information regarding the publication and 
page on which the article appeared in hard copy. 

The Second Circuit also erred in its conclusion that 
the electronic copies are infringing “new anthologies” of 
the Publications because multiple editions rest together in a 
single storage medium, here the NEXIS computer servers 
and individual CD-ROMs. That conclusion misunderstands 
electronic media — which necessarily involve the storage 
of numerous files on a single “disc” — in the context of 
the Copyright Act, which recognizes that a distinct “work” 
is created when “fixed” in any medium. The transfer of the 
Publications from hard copy to electronic media is a purely 
“mechanical” act furthermore that cannot be said to create a new 
work. Feist Publ’ns v. Rural Tel. Serv. Co., 499 U.S. 340, 362 
(1991). The Second Circuit’s reasoning, moreover, invalidates 
longstanding publishing practices such as the distribution of 
microfilm and microfiche, which often contain multiple editions 
of a particular periodical on a single piece of film. 

Similarly unavailing is the Second Circuit’s assertion 
that the electronic copies fall outside the Section 201(c) 
privilege because end-users may retrieve individual articles 

19 

from the libraries. Respondents’ complaint alleges only a 
claim of direct copyright infringement by petitioners. 
“Third party conduct would be wholly irrelevant in an action 
for direct infringement.” Sony Corp. of Am. v. Universal 

City Studios, 464 U.S. 417, 446 (1984) (emphasis added). 
As noted, petitioners not only include the Publications’ entire 
editorial content in the electronic libraries, but also market 
those libraries as containing complete editions of the 
periodicals. Moreover, the Second Circuit’s analysis would 
render microfilm and microfiche infringing, both of which 
are used by researchers for the near-exclusive purpose of 
retrieving individual articles. 

Finally, the Second Circuit’s decision would have 
devastating effects upon the contents of electronic libraries 
if not reversed. Hundreds of thousands of non-staff-written 
contributions would have to be deleted from services such 
as NEXIS. CD-ROMs would have to be destroyed because 
it is impossible to delete individual articles. The impact on 
electronic archives as a useful tool for research would be 
inestimable. 

The judgment accordingly should be reversed. 

ARGUMENT 

I. Congress Intended Publishers To Continue To Be Able 
To Make Their Publications, And Any Revisions Of 
Them, Available To Researchers And The Public. 

A. The Text Of The Copyright Act Establishes That 

The Electronic Copies In Dispute Are Privileged. 

1. The Phrase “Any Revision.” The Copyright Act 
grants periodical publishers a copyright distinct from 
that held by the authors of individual contributions. 
See 17 U.S.C. § 103(b). To permit the unrestricted 
exploitation of that collective work copyright in specifically 
authorized ways, Section 201(c) of the Act expressly permits 
publishers to reproduce and distribute their collective works, 
including any separately copyrighted contributions, as 
part of the original (“that particular”) collective work, 

20 

“any revision” thereof and any later collective work in the 
same series. See id. § 201(c). The electronic copies at issue — 
which preserve the entire editorial content of the hard copy 
version and in some instances are exact photographic 
duplicates — plainly qualify as “revisions.” Indeed, the GPO 
copies also qualify under the “that particular” collective work 
clause because they are identical to the hard copies and differ 
only in that they have been transferred to a new medium. 

The second of these privileges is particularly broad. 

12 

To “revise” a collective work is “to make a new, amended, 
improved or up-to-date version” of it; similarly, a “revised 
edition” is an edition “incorporating major revisions . . . and 
often supplementary matter designed to bring it up to date.” 

Webster’s Third New Int’l Dict. 1944 (1968) (emphasis added); 

12. To narrow that scope, respondents argued below that because 
Section 201(c) refers to a “privilege,” publishers lacked a “right” that 
could be licensed. This distinction was rejected by the district court as 
contrary to the plain language of the Act, a conclusion left undisturbed 
by the Second Circuit. Cert. App. 47a-50a. The Act’s legislative history, 
which consistently employs the terms “rights” and “privileges” 
interchangeably, confirms this. See Copyright Law Revision, Part 1, at 
87-88, J.A. 556a (describing Section 201(c) “privilege” as a “right”); 
see also Copyright Law Revision, Part 3, at 267, J.A. 595a (statement 
of E. Gabriel Perle of Time to same effect); id. at 258, J.A. 585a (Abe 
A. Goldman, of the Copyright Office legal staff, later Acting Register, 
to same effect); 112 Cong. Rec. 24,066 (1966), J.A. 657a (statement of 
Rep. Robert Kastenmeier, later Chairman of the Subcommittee of the 
House Judiciary Committee responsible for the copyright laws, to same 
effect). The use of the word privilege, as this Court concluded in Mills 
Music, Inc. v. Snyder, 469 U.S. 153, 175-76 (1984), in connection with 
Sections 203(b)(1) and 304(c)(6)(A) of the Act, simply refers to grants 
that cannot be terminated. 

Moreover, Section 201(d)(1) permits partial transfers of copyright 
by “operation of law.” Section 201(d)(2) of the Act, in turn, permits 
any of the exclusive rights comprised in a copyright, “including any 
subdivision of any of the rights specified by section 106,” to be 
transferred. The “privilege” accorded publishers is precisely such a 
“subdivision” of copyright transferred by “operation of law.” Its further 
conveyance, therefore, is expressly authorized by Section 201(d)(2). 

21 

Stewart v. Abend, 495 U.S. 207, 233-35 (1990) (emphasizing 
the importance of a plain meaning interpretation of the 1909 
Copyright Act). Indeed, the Act itself contemplates that a 
“revision” can be so substantial that it would otherwise qualify 
as an entirely new copyrightable work. Cf. Robinson v. Shell 
Oil Co., 519 U.S. 337, 341 (1997) (meaning of a term in a statute 
is determined by “the broader context of the statute as a whole”). 
Thus, a “derivative work” (which is a new work under the Act) 
is defined to include “[a] work consisting of editorial revisions 

. . . which, as a whole, represent an original work of authorship.” 
17 U.S.C. § 101. If, as the district court noted, “editorial 
revisions” can create a new, original work of authorship, then a 
fortiori, the broader term “any revision” clearly must encompass 
the less significant changes made to the Publications in this 
case. Cert. App. 58a (emphasis added). 

The breadth of conduct privileged under Section 201(c) 
is reinforced by Congress’ use of the word “any” to modify 
“revision.” “Any” is a phrase conspicuous for its breadth, as 
this Court repeatedly has confirmed. See Harrison v. PPG 
Indus., Inc., 446 U.S. 578, 589 (1980) (“expansive” use of 
“ ‘any other final action’ . . . offers no indication whatever 
that Congress intended the limiting construction . . . 
respondents now urge”) (emphasis in original); Freytag v. 
Commissioner, 501 U.S. 868, 874 (1991) (noting “broad sweep” 
of phrase “any other proceeding”); United States v. Turkette, 
452 U.S. 576, 580-81 (1981) (“any person” and “any 
individual” admitted of “no restrictions upon the associations 
embraced by the definition”). The use of “any” does not permit 
the limits artificially imposed by the Second Circuit, as by 
constraining the privilege to “later editions of a particular 
issue of a periodical” or the “new edition of a dictionary or 
encyclopedia.” Cert. App. 10a. 

2. The Act’s Uniformly Media-Neutral Provisions. 
That “any revision” encompasses not just print, but also 
electronic, copies is plain from other provisions of the Act that 
define and inform the fundamental concepts used in Section 

22 

201(c). In this regard, the Second Circuit erred by examining 
Section 201(c) in isolation, thus violating the precept that 
a reviewing court must interpret the statute “as a 
symmetrical and coherent regulatory scheme,” Gustafson 

v. Alloyd Co., 513 U.S. 561, 569 (1995), placing each 
constituent part “into an harmonious whole.” FTC v. Mandel 
Bros., Inc., 359 U.S. 385, 389 (1959). 

13 

Congress carefully drafted the Act in media-neutral 
terms that contemplate and encourage the development and 
use of new technologies. The concept of media neutrality 
runs throughout the Act, beginning with its definitional 
provisions. The core element of copyright is the “work,” 
which the Act provides may be fixed in any medium “now 
known or later developed, from which [it] can be perceived, 
reproduced, or otherwise communicated, either directly or 
with the aid of a machine or device.” 17 U.S.C. § 102(a); 

see also H.R. Rep. No. 1476, at 52, J.A. 695a (noting that 
“it makes no difference” how a work is fixed; it remains 
the same “whether embodied in a physical object in written, 
printed . . . magnetic or any other stable form, and whether 
it is capable of perception directly or by means of any 
machine or device ‘now known or later developed’ ”). 

14 

A “work” is reproduced and/or distributed — the core 
concepts embedded in Section 201(c) — in the form of 
“copies.” 17 U.S.C. §§ 106(1) & (3). “Copies” are defined 
as “material objects . . . in which a work is fixed by any 
method now known or later developed,” including a version 
created “with the aid of a machine or device,” id. § 101, 
such as a computer. Accordingly, the plain language of 

13. The Second Circuit’s approach contrasts sharply with that 
adopted by the district court, which emphasized that a “principled” 
analysis of Section 201(c) required it to consider it “alongside other 
sections of the Act.” Cert. App. 41a. 

14. The Act itself emphasizes that a machine or device can be 
one “now known or later developed.” 17 U.S.C. § 101. 

23 

Section 201(c) and the other related provisions of the Act 
requires an interpretation of “any revision” that 
encompasses not only copies of periodicals that are revised 
as to content, but also those revised in ways that allow them 
to be “fixed” in some new medium. 

15 The Act thus ensures 
that the transfer of a work between media — as when a 
periodical is transferred between paper and electronic copies 
— is not regarded as either altering the character of, or 
infringing, that work. 

Thus, the Second Circuit had it entirely wrong in finding 
copyright infringement based principally on factors that 
inevitably arise from the transfer of petitioners’ collective works 
between media — including particularly the ability of end-users 
to search electronic media and retrieve individual articles. Under 
the Copyright Act, any work, including a collective work, 
remains the same regardless of how or where “copies” are 
“fixed”: whether printed on paper, photographed for microfilm, 
“burned” onto a CD-ROM, or electronically copied to a 
computer server. Id. § 101 (defining “fixed”). 

16 Each of those 
acts of reproduction creates a “copy,” but only of the same 
work “fixed” in a different medium. In other words, whether 
a given collective work, or any revision thereof, is printed, 
reproduced on CD-ROM or stored on a larger disc housed 
in the NEXIS central servers, all are “copies” of the same 

15. The Act broadly defines a work as “fixed” whenever it 
“is sufficiently permanent or stable to permit it to be perceived, 
reproduced, or otherwise communicated for a period of more than 
transitory duration.” 17 U.S.C. § 101. The Act’s consistent use of 
basic terms like “reproduce” and “distribute” makes clear that 
Congress intended to grant publishers a broad, presumptive privilege 
to embody and disseminate their collective works and any revisions 
of those works in any medium. 

16. See H.R. Rep. No. 1476 at 53, J.A. 697a (“[A] ‘book’ is not 
a work of authorship, but is a particular kind of ‘copy.’ Instead, the 
author may write a ‘literary work,’ which in turn can be embodied 
in a wide range of ‘copies’ and ‘phonorecords,’ including books, 
periodicals, computer punch cards, microfilm, tape recordings, and 
so forth.”). 

24 

“work” authorized to be reproduced and distributed by 
publishers under Section 201(c). 

17 

Having ignored all of this, the Second Circuit’s opinion 
allows the copyright status of a work to be dictated by its 
medium of fixation and creates a new and unworkable rule 
of copyright law. Under its reasoning, the independent 
copyright status of a work evaporates if it is stored digitally 
on a medium that also stores other works because, once so 
“commingled,” its original selection is lost and it then 
represents part of a “new anthology.” Cert. App. 17a. This 
reasoning cannot be reconciled with this Court’s ruling in 
Feist. The wholesale translation of entire books and 
periodicals into the digital medium is so “mechanical or 
routine as to require no creativity whatsoever,” and therefore 
cannot create the “new” work that the Second Circuit found. 
Feist, 499 U.S. at 362. 

The Second Circuit incorrectly concluded that storing 
multiple collective works together creates a “new anthology,” 
Cert. App. 17a, relying on legislative history that simply 
makes clear that Section 201(c) was not intended to allow 
individual articles to be selected for inclusion in a separate 
anthology. House Report at 122-23, J.A. 706a (Section 
201(c) is not intended to authorize publishers to include 
“the contribution itself” in “a new anthology or an entirely 
different magazine or other collective work”). That legislative 
history simply recognizes that publishers, apart from the 
specific publishing practices sanctioned by Section 201(c), 
generally do not reproduce or distribute the individual 
contribution apart from the collective work in which it is 
included. The Second Circuit’s approach, however, creates 
new anthologies — and infringing works — with alarming 

17. Given the breadth of these definitions, the district court 
correctly observed that “the right to reproduce a work, which 
necessarily encompasses the right to create copies of that work, 
presupposes that such copies might be ‘perceived’ from a computer 
terminal.” Cert. App. 52a. 

25 

frequency when two or more independent works, even by 
the same publisher, are stored together in a single medium. 
Such reasoning has the potential to transform the hard drive 
of every PC and laptop computer that contains multiple files 
into an infringing anthology and upsets settled law that 
changing the medium in which a copyrightable work is 
displayed does not create a new work. See L. Batlin & 

Son, Inc. v. Snyder, 536 F.2d 486, 491 (CA2) (“the mere 
reproduction of a work . . . in a different medium should not 
constitute the required originality”), cert. denied, 429 U.S. 
857 (1976). As the Second Circuit itself concluded only a 
few years ago, immersion of a work in a larger database does 
not cause the original work to lose its independent copyright 
status. CCC Info. Serv. v. MacLean Hunter Market Reports, 
44 F.3d 61, 68 n.8 (CA2 1994), cert. denied, 516 U.S. 817 
(1995). In copyright terms, the medium is not the message. 

3. The Second Circuit’s Flawed Textual Analysis. 
The Second Circuit’s contrary holding rests not on the 
meaning of “any revision” or the Act’s many media-neutral 
terms, but instead on a supposed inference improperly drawn 
from the structure of Section 201(c). Addressing the three 
privileges granted to publishers in the three clauses of Section 
201(c), the court of appeals deemed “that particular collective 
work” a “floor,” “any later collective work in the same series” 
a “ceiling,” and the penultimate category — “any revision” 
— some sort of middle level that must be less expansive 
than the “ceiling.” 

There is no support for this rigid “floor to ceiling” 
analogy, in which three traditional and overlapping 
publishing practices, well known to Congress when it adopted 
the Act in 1976, are hermetically sealed from each other. 
To the contrary, these clauses were intended to assure 
publishers the ability to continue to reproduce and distribute 
their collective works in ways that were not controversial: 
to publish, revise and republish periodicals, encyclopedias, 
textbooks and other collective works without having to 

26 

re-seek permission to include each separately copyrighted 
contribution. See, e.g., H.R. Rep. No. 2237, at 117, 
J.A. 664a (201(c) presumes “the privilege of republishing 
the contribution”) (emphasis added), H.R. Rep. No. 1476, 
at 122, J.A. 706a (same). 

The first clause (“that particular collective work”) 
addresses the magazine, newspaper or encyclopedia edition 
in which the article is first published. The third clause, 
“later collective work in the same series,” means that 
“a publishing company could reprint a contribution 
from one issue in a later issue of its magazine.” 
H.R. Rep. No. 1476, at 122, J.A. 706a. Within the last few 
years, for example, to celebrate its 75th anniversary, the 

New Yorker’s current issues have included full or excerpted 
articles published over the past decades. The last clause of 
§ 201(c) permits that practice, as the legislative history 
confirms. See n.20 infra. 

18 

That leaves the second clause — “any revision” — to 
stand on its own, without the artificial ceiling of the third 
clause that the Second Circuit erected. The legislative history 
gives as a specific example of a permissible “revision” 
“reprint[ ing] an article from a 1980 edition of an 
encyclopedia in a 1990 revision of it.” H.R. Rep. No. 1476, 
at 122, J.A. 706a. Such a “revised” encyclopedia could 
include numerous changed contributions, far more than is 
true of the electronic copies in this case. 

No principle of statutory interpretation requires Congress 
to list phrases in a statute in any particular order or permits 
courts to draw otherwise unsupported inferences from the 
sequence in which Congress lists them. The canons of 

18. Because such resulting works cannot be considered revisions 
of any particular edition of the New Yorker, the Second Circuit was 
incorrect to assert that petitioners’ reading would render the third clause 
“superfluous.” Cert. App. 12a. See Quality King Distribs., Inc. v. L’anza 
Research Int’l Inc., 523 U.S. 135, 148-49 (1998) (rejecting contention 
that reading of Act would render clause superfluous because its 
exceptions “remain applicable in some situations”) 

27 

statutory construction employed by the Second Circuit 
(ejusdem generis and noscitur a sociis) do not support its 
construction of Section 201(c), because neither applies when, 
as here, the statutory language is unambiguous. 

See Harrison, 446 U.S. at 589 (because there was “no 
uncertainty in the meaning of the phrase “any other final 
action,” it was “inappropriate to apply the rule of ejusdem 

generis” (emphasis in original)); Garcia v. United States, 
469 U.S. 70, 74-75 (1984) (ejusdem generis); Jarecki v. G.D. 
Searle & Co., 367 U.S. 303, 307 (1961) (noscitur a sociis). 
Further, ejusdem generis (“of the same kind”), is inapplicable 
here because “[e]ach category [in Section 201(c)] describes 
a separate type of enterprise to be covered by the statute.” 

United States v. Turkette, 452 U.S. 576, 582 (1981). Similarly, 
noscitur a sociis (a word or phrase “is known by its 
companions”) is incorrectly used if it alters the meaning of 
a phrase that has “a character of its own not to be submerged 
by its association.” Babbitt v. Sweet Home Chapter of 
Communities for a Great Or., 515 U.S. 687, 702 (1995) 
(quoting Russell Motor Car Co. v. United States, 261 U.S. 
514, 519 (1923)). The Second Circuit’s method of 
interpretation has serious implications for all statutes where 
Congress has listed overlapping categories without intending 
either an inference from their order or that the categories be 
deemed mutually exclusive. E.g. 18 U.S.C. § 1964(1) 
(defining RICO enterprise as including “any individual, 
partnership, corporation, association, or other legal entity”). 

In sum, the text of Section 201(c) demonstrates that the 
electronic copies qualify as “revisions” and in some instances 
as the same “collective work” as the print editions of the 
periodicals. 

28 

B. The Legislative History Also Establishes 

That Congress Did Not Intend To Interfere 
With Publishers’ Long-Recognized Rights To 
Reproduce And Distribute Their Publications. 

The proper interpretation of the text and structure of 
Section 201(c) is reinforced by the Act’s legislative history. 
This Court repeatedly has recognized that the Copyright Act’s 
uniquely informative legislative history can aid 
“understanding of the phrase” in dispute within the Act. 
Mills Music, Inc. v. Snyder, 469 U.S. 153, 156 (1985). 
Thus, an “undefined statutory term” — such as “any revision” 
— should be read in light of the legislative history, which 
details “two decades of negotiations by representatives of 
creators and copyright-using industries, supervised by the 
Copyright Office and . . . Congress.” Community for Creative 
Non-Violence v. Reid, 490 U.S. 730, 743 (1989). Reference 
to the legislative history ignored by the Second Circuit is 
particularly appropriate in this case, because Section 201(c) 
plainly reflects a carefully negotiated compromise that should 
be enforced as reached. Abend, 495 U.S. at 225 (recognizing 
that “each provision of the 1976 Act was drafted through a 
series of compromises between interested parties”). 

1. The Legislative History Confirms The Breadth Of The 
“Any Revision” Language. That Congress intended Section 
201(c) to grant publishers the presumptive right to any and 
all aggregate uses of their collective works is clear given its 
overall purpose: to change the law regarding ownership of 
contributions under the Act’s predecessor statute, the 1909 
Copyright Act. Dole v. United Steelworkers of Am., 494 U.S. 
26, 35 (1990) (statutes should be interpreted in light of their 
“object and policy”). Under the 1909 Act, the absence of a 
signed agreement resulted in freelance authors conveying all 
rights in their articles to a periodical publisher. Alexander v. 

Irving Trust Co., 132 F. Supp. 364, 369 (S.D.N.Y.) (where 
there was no contract between the publisher and the 
plaintiff and no reservation of rights, “it must be presumed” 

29 

that the publisher acquired all rights), aff’d, 228 F.2d 221 
(CA2 1955), cert. denied, 350 U.S. 996 (1956); Geisel v. 
Poynter Prods., Inc., 295 F. Supp. 331, 344 (S.D.N.Y. 1968) 
(“Absent a reservation . . . the copyright and all other rights 
pass with an . . . unconditional sale.”) (citations omitted). 

19 

Many authors thus unintentionally transferred away a range 
of rights (such as sequelization, novelization, screenplay or 
merchandise rights) that had independent value unrelated to 
the magazine, newspaper or other collective work to which 
their articles were originally contributed. 

To change that result, the Register of Copyrights initially 
recommended that, under the new Act, “a periodical . . . 
publisher” automatically acquire only the right to publish a 
contribution in its periodical or “a similar composite 
[i.e., collective] work.” Copyright Law Revision, Part 1, at 
88, J.A. 556a. Harriet Pilpel, representing the views of freelance 
authors, objected that the reference to a “similar” collective 
work might result in authors transferring more than the 
Register intended. She was concerned that by selling an article 
to a newspaper such as Newsday an author also might transfer 
the right to sell the same article for publication in The New 

York Times, which is a “similar composite work.” Copyright 
Law Revision, Part 2, at 151, J.A. 568a. Based on this concern, 
the Register agreed to a clarification, i.e., that “similar 
composite work” meant “that particular composite work” and 
no other. Id. at 153, J.A. 571a (emphasis added). 

In response, Horace S. Manges, a publishers’ 
representative, questioned whether the phrase “that particular 

. . . work” would be broad enough to cover a standard 

19. This result was dictated by the doctrine of copyright 
indivisibility under the 1909 Act, under which only a single owner could 
have an interest in a copyrighted work at any one time. 
See Hirshon v. United Artists Corp., 243 F.2d 640, 643 n.3 (CADC 1957) 
(“[A] copyright is an indivisible thing, and cannot be split up and 
partially assigned either as to time, place, or particular rights or 
privileges, less than the sum of all the rights comprehended in 
the copyright.”). 

30 

publishing practice: revising an edition of an original collective 
work to omit materials (as is true in the case of NEXIS and 
NYTO on the view of the facts most favorable to respondents). 
Id. Irwin Karp, another strong pro-author advocate, argued 
that it did not and that publishers should be required to obtain 
such rights by contract. Id., J.A. 571a-72a. 

The Register’s next draft initially adopted Mr. Karp’s 
pro-author approach, providing: 

The owner of copyright in the collective work 
shall, in the absence of an express transfer of the 
copyright or of any exclusive rights under it, be 
presumed to have acquired only the privilege of 
publishing the contribution in that particular 
collective work. 

Copyright Law Revision, Part 3, at 15, J.A. 579a. Publishers, 
however, again objected to the exclusion of revised editions: 

The addition of the word “particular” raises in my 
mind the question as to whether revisions of that 
collective work would be “that particular work” 
— whether a volume containing only half of the 

material in “that particular collective work” would 
therefore be excluded. 

Id. at 261 (emphasis added), J.A. 591a (statement of Bella 
Linden). 

The Register ultimately agreed that, in the absence of 
an agreement to the contrary, such revisions of collective 
works should be permitted. The next draft therefore included 
a privilege of reproduction and distribution with respect to 
not only the original “collective work” but also “any revisions 
of it.” Copyright Law Revision, Part 5, at 9, J.A. 604a 
(emphasis added). Significantly, the Irwin Karp approach, 
requiring a publisher to contract for the right to republish 
revised editions, including those “eliminating . . . original 
contributions,” was permanently rejected. Instead, the 
authority of a publisher to make “any revision,” including 
a revision containing “only half of the material” in the 

31 

original, became a part of Section 201(c), making clear 
that decisions as to how a collective work may be revised 
properly remain with the collective work owner. 

Freelance authors, having successfully negotiated a 
much better arrangement than existed under the 1909 Act, 
did not object to this. Their sole concern at that point was 
to ensure that publishers could not revise individual 
contributions, as opposed to mandating retention of the 
format, layout, selection and other contents of the collective 
work. For example, Harriet Pilpel acknowledged that if the 
right to make revisions 

means “any revisions of the collective work” in 
terms of changing the contributions, or their order, 
or including different contributions, obviously the 
magazine writers and photographers would not 

object. . . . [C]onsequently I suggest that the wording 

at the end of subsection (c) be changed or eliminated 
to make that absolutely clear. 

Id. at 152, J.A. 615a (emphasis added). The Register adopted 
that recommendation, and refashioned Section 201(c) to clarify 
that the “any revision” language authorizes any changes to 
the “particular collective work” as a whole, but not to the 
individual contribution. 

20 

20. Although the 1964 Revision Bill originally allowed 
inclusion of freelance contributions only “as part of that particular 
collective work and any revisions of it,” Copyright Law Revision, 
Part 5, at 9, J.A. 604a, the Magazine Publishers Association objected 
that this limited “the publication on the part of the publisher to a 
particular issue of a particular periodical, thereby eliminating the 
relatively simple and generally accepted right of republication in 
the same periodical.” Id., J.A. 612a. The language “and any later 
collective work in the same series” was added to the 1965 Revision 
Bill to cover this other standard publishing practice, not, as the 
Second Circuit supposed, to impose some artificial limit on the 
purposely broad “any revision” language that had earlier found its 
way into the Revision Bill. Copyright Law Revision, Part 6, at 69, 
J.A. 627a. See also n.18 supra. 

32 

The 1966 House Report, summarizing these extensive 
negotiations, emphasized the fairness of according publishers 
“the privilege of republishing the contribution under certain 
limited circumstances,” and deemed it the essence of the Section 
201(c) compromise: 

[U]nless there has been an express transfer of 
more, the owner of the collective work acquires 
“only the privilege of reproducing and 
distributing the contribution as part of that 
particular collective work, any revision of that 
collective work, and any later collective work in 
the same series.” . . . [T]his presumption . . . 
represents a fair balancing of the equities. 

H.R. Rep. No. 2237, at 117, J.A. 663a-64a. 

21 The result could 
not be clearer: Although publishers of collective works 
cannot, under this congressionally mandated allocation of 
rights, cherry-pick an illustration from an issue of a 
newspaper or magazine and sell lithographs of it or turn a 
contribution into a novel, cf. Playboy Enters., Inc. v. Dumas, 
53 F.3d 549 (CA2), cert. denied, 516 U.S. 1010 (1995); 
Geisel, 295 F. Supp. 331, they are permitted to reproduce 
and distribute a contribution in ways that Congress agreed 

21. Of note: The drafts of what became Section 201(c), even 
the later ones covering an expanded range of publishing practices, 
consistently were hailed by pro-author representatives. 
See, e.g., Hearings on H.R. 4347, at 1917, J.A. 653a (statement of 
Prof. W. Albert Noyes, Jr., Chairman, National Academy of Sciences- 
National Research Council Ad Hoc Committee on Copyright Law 
Revision) (“regularity and clarity” of Section 201(c) are “particularly 
favorable for the individual scientific author”); Hearings on S. 597, 
at 1136, J.A. 667a (statement of Harriet F. Pilpel, American Society of 
Magazine Photographers and the Society of Magazine Writers) (with 
the passage of Section 201(c), “[m]any of the confusions and 
ambiguities in the present law will disappear”); id. at 1142, J.A. 671a 
(statement of Tom Mahoney, Society of Magazine Writers) (the section 
represents “a major improvement over existing copyright law” because 
it clarifies “the rights of contributors to periodical literature”). 

33 

were directly related to their core business — publishing 
their collective works in any medium. 

22 

Ignoring virtually all of this history, the Second Circuit 
focused on the uncontroversial fact that a publisher cannot 
extract the “contribution itself” from a collective work and 
then reuse it in an entirely “new anthology or an entirely 
different magazine or other collective work.” H.R. Rep. No. 
2237, at 117, J.A. 664a; Cert. App. 17a. This emphasis is 
misplaced for three reasons. First, as the district court noted, 
the undisputed facts are that copies of the periodicals in 
question have been added to and are available through the 
NEXIS computerized library and UMI’s CD-ROMs on an 
entire issue-by-issue basis. Cert. App. 70a (district court 
opinion explaining that even respondents recognize “that the 
complete content of all of the articles from each disputed 
periodical are available” on the electronic copies). Second, 
as set forth above, neither Section 201(c) nor any other 
provision in the Act was intended to restrict a publisher’s 
ability to reproduce and distribute the collective work as a 
whole. Third, by no stretch of the imagination, let alone 
the plain language of the Act and its legislative history, 
can NEXIS or CD-ROMs be deemed a new anthology or 

22. Another decision involving Section 201(c), Ryan v. Carl Corp., 
23 F. Supp. 2d 1146 (N.D. Cal. 1998), underscores the balance struck 
in the Act. Ryan held that the Section 201(c) privilege did not apply to 
a research and photocopying service, the employees of which would 
visit a “brick and mortar” library and, without license from the 
contributors or the publishers, directly make reproductions of freelance 
articles apart from the rest of the collective work in which they appeared. 
That scenario is the complete opposite of that involved here, where the 
publishers license the entirety of their collective works to NEXIS and 
UMI. Because the Ryan court correctly recognized that the reproductions 
before it upset the “predictable and equitable” distinction between 
copies of individual articles (a use Congress preserved exclusively for 
the freelancer), id. at 1149, and copies of entire original or revised 
periodicals (which Congress granted to publishers), it properly held 
such exploitation of individual articles to be outside the scope of Section 
201(c). 

34 

different collective work. They are simply storage media 
on which copies of works reside in electronic versions. 

2. Congress Was Aware, And Sought To Facilitate The 
Use, Of Computers And Electronic Copies. When drafting 
the Act, Congress took pains to include within its scope future 
technologies that had yet to be invented or imagined. At the 
same time, the legislative history reveals that Congress 
received specific testimony about the advent of computer 
technology, and the ways works would be stored in electronic 
form. Accordingly, it is fanciful to suppose that Congress 
confined publishers’ copyright privileges to paper copies. By 
1965, Congress knew not only that publishers of collective 
works already were able to reproduce and distribute those 
works on electronic information storage and retrieval 
systems, but also that the significance of reproduction and 
distribution on such systems would grow tremendously. 

Cf. Mills Music, 469 U.S. at 172 (rejecting Second Circuit’s 
“assum[ption] that Congress was unaware of a common 
practice in one of the industries that the general revision of 
the copyright law . . . most significantly affected”). The 1965 
Report of the Register of Copyrights to Congress, which 
contained the final language of Section 201(c) as ultimately 
enacted by Congress, stated: 

In recent years we have seen, among a multitude 
of technological developments, the introduction 
of communications satellites [and] the tremendous 
growth in information storage and retrieval 
devices. . . . [W]e now find that even our 1961 

recommendations were not flexible and forward- 
looking enough. 

Copyright Law Revision, Part 6, at xiv-xv, J.A. 621a 
(the “1965 Report”). The 1965 Report devoted an entire 
section to this very issue. Entitled “Use in Information 
Storage and Retrieval Systems,” it recommended against 
adoption of an “explicit provision” relating to such systems’ 

35 

“that could later turn out to be too broad or too narrow.” 

Id. at 18, J.A. 624a. It continued: 

A much better approach, we feel, is to state the 
general concepts of copyright in language, such 
as that in section 106(a), which would be general 
in terms and broad enough to allow for adjustment 
to future changes in patterns of reproduction and 
other uses of authors’ works. 

Id., J.A. 624a. The 1965 Report directly endorsed the 
concept of a media- neutral “reproduction” right 
in connection with electronic copies, acknowledging 
that 

the actual copying of entire works (or substantial 
portions of them) for “input” or storage in a 
computer would constitute a “reproduction” . . . 
whatever form the “copies” take: punchcards, 
punched or magnetic tape, electronic storage 
units, etc. 

Id., J.A. 624a. 

The 1965 Report and related testimony before Congress 
are replete with references to the then-current and 
future capabilities of electronic storage and information 
systems. 

23 See, e.g., Hearings on H.R. 4347 at 1427, 
J.A. 651a (testimony of Bella Linden) (describing 
electronic search and retrieval mechanisms for libraries of 
collective works, such as medical journals and other texts: 
“Just as in a jukebox when a person pushes the button, the 
arm finds what he wants, so the searching arm goes along 
with the discs and picks out what the researcher wants”). 

23. As the district court noted, “the 1976 Act was plainly crafted 
with the goal of media neutrality in mind.” See Cert. App. 56a-57a. 
As George D. Cary, Deputy Register of Copyrights explained to Congress 
in 1965: “[Y]ou can read the bill from beginning to end and you won’t 
find it in any reference to computers, [which] are one of the coming 
instruments of communication in the future. We have tried to phrase the 
broad rights granted in such a way that they can be adapted as time goes 
on to each of the advancing media.” Hearings on H.R. 4347, J.A. 638a. 

36 

Id. at 1146-47, J.A. 647a (Statement of John F. Banzhaf III, 
President, Computer Program Library) (describing ability of 
computer information storage and retrieval systems to “scan 
material at an almost unbelievable speed” and to examine 
material “for key words and symbols”); Copyright Law 
Revision, Part 6 at 18, J.A. 623a-24a (same). Indeed, by the 
1970s, electronic databases like NEXIS already were being 
marketed to the public. 

Eleven years later, in 1976, the House Report 
accompanying the Act again noted the “increasing 
use of information storage and retrieval devices,” 
H.R. Rep. No. 1476, at 47, J.A. 685a, and reaffirmed that one 
of the purposes of the new Act was to make clear that copies 
of works could be reproduced in any “form, manner, or medium 
of fixation . . . capable of perception directly or by means of 
any machine or device ‘now known or later developed.’ ” 

Id. at 52, J.A. 695a (citation omitted). 

24 Having adopted such 

24. Contrary to respondents’ position below, it simply is not 
true that searches of, and retrievals of individual articles from, 
electronic libraries were not contemplated by Congress. In 1975, as 
the Act was taking its final form, the congressional committee 
drafting the Act received direct testimony confirming that computer 
databases would be used as vast libraries in which complete books 
and periodicals could be stored and accessed in exactly the way the 
NEXIS database and UMI CD-ROMs are used today. Hearings on 
H.R. 2223, at 338, J.A. 676a (testimony of Paul G. Zurkowski, 
President, Information Industry Association) (under the Act, 
collective works such as encyclopedias and periodicals would be 
input, and through computer equivalents of the Reader’s Guide, 
located to access individual contributions); see also Hearings on 
H.R. 4347 at 68, J.A. 642a (testimony of Lee Deighton, American 
Textbook Publishers Institute) (database is an “electronic information 
center” equivalent to “a duplicating rather than a circulating library” 
(emphasis added)); Copyright Law Revision, Part 3, at 418, J.A. 596a 
(statement of George Shiffer, National Community Television Ass’n) 
(computer databases were “kinds of libraries as yet uninvented . . . 
when a manuscript will be fed into a computer and ordered as 
needed” (emphasis added)). 

37 

a flexible approach to the concept of copies, Congress was 
able to defer the issue of whether the application of copyright 
law to computer technologies required even further changes 
in the new Act. Accordingly, it authorized a study of that issue 
by the National Commission on New Technological Uses of 
Copyrighted Works (“CONTU”). H.R. Rep. No. 1476, at 116, 
J.A. 703a-04a. 

When CONTU issued its final report (the “CONTU 
Report”) on July 31, 1978, it made only three limited proposals, 
none of which bears on this case. 

25 The CONTU Report 
concluded, precisely because of the broad definitions of copies 
and of other concepts, that the new Act already had achieved 
“the desired substantive legal protection for copyrighted works 
which exist in machine-readable form.” Id. at 40, J.A. 715a. 
In fact, the CONTU Report specifically noted that the 
“introduction of a work into a computer memory” was to be 
considered another form of “reproduction of the work” under 
the Act. Id. This specific conclusion directly contradicts 
respondents’ repeated efforts to limit the Section 201(c) 
privilege to paper-only media. 

3. Congress Twice Rejected Legislation That Would Have 

Adopted Respondents’ Reading Of Section 201. 

As the district 

court properly emphasized, respondents’ dissatisfaction with 
Section 201(c) should be directed to Congress. Cert. App. 79a. 
It is noteworthy, however, that Congress has, twice since 1976, 
refused to alter the “fair balancing” embodied in Section 
201(c). In 1983, Senator Thad Cochran, supported by the 

25. It recommended repealing 17 U.S.C. § 117 as enacted; 
adding a definition of “computer program” to Section 101 of 
the Act; and enacting a new Section 117, which provided a 
copyright safe-harbor for certain copies of a computer program. 
CONTU Report at 12, J.A. 711a-713a. On December 12, 1980, these 
recommendations were enacted as law. Pub. L. No. 96-517, § 10(b), 
96th Cong., 1st Sess., 94 Stat. 3028 (1980). Having considered this 
extensive history, the district court concluded that it contradicted 
respondents’ contentions that Congress did not intend the Act to 
“encompass all variety of developing technologies.” Cert. App. 56a. 

38 

National Writers Union (which selected the respondents and 
funded this litigation), J.A. 447a, 459a, introduced a bill that 
would have altered the Section 201(c) compromise. 
S. 2138, 98th Cong., 1st Sess.; 129 Cong. Rec. 34,442 (1983), 
J.A. 731a, 737a. A new Section 201(f) would have permitted a 
freelance author to bring a federal cause of action to “reform 
or terminate” the automatic transfer of rights under Section 
201(c) when the profits received by the publisher of a collective 
work “are strikingly disproportionate” to the “compensation” 
received by the author. S. 2138 § 2(3), J.A. 735a. The proposed 
cause of action provided that, at any time following a 
publisher’s acquisition of rights under Section 201(c), a 
plaintiff could claim that 

the terms of the transfer have proven to be unfair 
or grossly disadvantageous to the author. The court 
shall decide the action in accordance with the 
principles of equity, and shall have discretion to 
reform or terminate the transfer on whatever terms 
it considers just and reasonable. 

Id., J.A. 735a. 

This bill would have provided a specific federal cause of 
action for the claim now advanced by respondents. In fact, 
one of the equitable factors freelancers suggested for 
determining if “the terms of the transfer have proved to be 
unfair” was whether “changes in business practices or media 
exploitation” had proven “disadvantageous to the author.” 
Hearing on S. 2044 at 45, J.A. 720a (supplemental testimony 
of ASMP and The Graphic Artists Guild). In 1984, an 
identically worded bill was introduced in the House of 
Representatives. See H.R. 5911, 98th Cong., 2d Sess., 130 
Cong. Rec. 17,729 (1984), J.A. 745a. Neither bill ever was 
reported out of committee, let alone voted on by either House 
of Congress. 

26 

26. This Court has overcome its reluctance to draw inferences 
from a congressional failure to act, see Brecht v. Abrahamson, 507 U.S. 
(Cont’d) 

39 

II. The Electronic Copies In This Case Are Privileged 
Under Section 201(c). 

As the text and legislative history establish, Section 
201(c) permits periodical publishers to reproduce and 
distribute their publications electronically. Although Section 
201(c) prevents a publisher from reproducing, revising or 
distributing an individual contribution apart from the 
remainder of the publications, that principle is not implicated 
here. Petitioners neither modify the underlying contributions 
in any respect, nor reproduce or distribute individual articles 
apart from the collective works of which they are parts. 
Once the Publishers’ editorial selection regarding a given 
periodical issue is made, the entire editorial content of that 
issue is included in the electronic copies. 

As to both NEXIS and CD-ROM, the facts belie the 
Second Circuit’s characterization that the publishers are 
indirectly using the service to offer individual articles for 
sale. Both are marketed in the same way they are created: as 
repositories of complete periodicals. NEXIS, for instance, 
is described as “the world’s most comprehensive collection,” 
not of articles, but of “international, national and regional 
publications, such as The New York Times, Associated Press, 
Reuters, Financial Times (of London), Le Monde and the 
Financial Post,” along with other “trade publications, 

619, 632-33 (1993), when, as here, Congress rejects legislation that 
would have granted the relief sought in the litigation. See FEC v. 
Democratic Senatorial Campaign Comm., 454 U.S. 27, 35-36 (1981) 
(“[I]nsofar as the intent of Congress is reflected in its failure to adopt a 
proposed amendment, a . . . strong[] inference can be found in the 
rejection by the 96th Congress of an amendment that would have 
expressly prohibited the movement of funds between state and national 
committees of a political party.”); Pacific Gas & Elec. Co. v. State Energy 
Resources Conservation & Dev. Comm., 461 U.S. 190, 220 (1983) 
(it would be “improper for us to give a reading to the Act that Congress 
considered and rejected”). 

(Cont’d) 

40 

newspapers, [and] reference data” found in “hard copy 
libraries.” J.A. 329a-30a. Similarly, UMI markets GPO as 
featuring “cover-to-cover reproduction of approximately 
200 of the most requested general-interest periodicals.” 
J.A. 332a. 

The Second Circuit nonetheless found the Section 
201(c) privilege inapplicable in this case because NEXIS 
does not contain the entire contents of the hard copy editions 
of the publications — i.e., it lacks some “selection” — and 
it does not perfectly reflect how the articles were placed in 
the original hard copy editions — i.e., it loses some of the 
“coordination” and “arrangement.” Such minor differences 
are contemplated both by the nature of the ASCII text 
medium in which the works are fixed and by the “any 
revision” privilege. In any event, any such differences are 
entirely inapplicable to GPO, which reproduces, with 
photographic exactitude, the entire contents of each page of 
each issue of The New York Times Book Review and Sunday 

Magazine. As to all of the criteria that give collective works 
their independently copyrightable status, GPO is 
indistinguishable from the hard copy editions, and thus does 
not contain a “revision,” but “that particular collective work.” 

A. Petitioners Sufficiently Preserve The “Selection” 

Of The Hard Copy Editions. 

Even if the Second Circuit’s factual characterization of 
the electronic copies were correct, it would be legally 
irrelevant, for the “revision” privilege permits a publisher to 
change significant elements of the original selection. 
As noted, the final language of Section 201(c) was arrived 
at only after extensive debate over the scope of the revision 
concept, including a description of permitted revisions in which 
a publisher could change one-half of the content of a collective 
work. Copyright Law Revision, Part 3 at 261, J.A. 591a. 

This Court need not, however, address the farthest 
extremes of the revision privilege in this case, because the 
Second Circuit seriously mischaracterizes the nature of the 

41 

electronic copies at issue, which are correctly described by 
the district court’s findings on the uncontested summary 
judgment record. Cert. App. 29a-32a. Just as they do with 
microfilm copies, petitioners have retained far more of their 
copyrightable selection than any reading of Section 201(c) 
requires by retaining the entirety — and not just a 
substantial portion — of their protected editorial selection. 
Put simply, the electronic copies of the Publications 
undeniably retain the single most important defining 
attribute of their collective work status — the original, 
creative and protected expression inherent in selecting the 
articles that comprise the day’s or week’s news — and they 
therefore, under any test, fall within the “any revision” 
privilege of Section 201(c). 

27 

Nor is there anything to the Second Circuit’s assertion 
that the electronic copies fall outside the “revision” privilege 
due to the manner in which the publishers transmit data to 
NEXIS. The undisputed facts establish that NEXIS receives, 
on an issue-by-issue basis (daily for The New York Times 
and Newsday; weekly for Sports Illustrated), a copy of the 
same computer files the publishers use to create the print 
version of the periodicals. J.A. 476a. The same is true of the 
material delivered to UMI to assemble issues of The New 
York Times appearing on NYTO CD-ROMs. J.A. 479a. 
Moreover, the GPO CD-ROMs are scanned directly from 
the paper issues of the periodicals. J.A. 481a. In all cases, 
copies are mechanically added on a periodical-by-periodical 
basis, not, as the Second Circuit erroneously asserted, as 

27. In fact, the district court actually applied a stringent test 
to petitioners’ electronic copies, analyzing whether they preserved 
a “significant” aspect of their collective works so that the revisions 
remain “substantially similar” to the original. Cert. App. 63a, 75a. 
Notwithstanding that rigorous standard, the court found it 
undisputed that a “defining original characteristic” — the “complete 
selection” of articles in each periodical — survives in the electronic 
edition “in such a way as to preserve the basic character of those 
periodicals.” Id. 96a-97a (internal quotations omitted). 

42 

“separate files representing individual articles.” Cert. App. 
4a; see id. 29a-31a (describing process). 

28 

B. Petitioners Sufficiently Preserve The “Arrangement” 

And “Coordination” Of The Hard Copy Editions. 

The Second Circuit also erred in concluding that 
the Section 201(c) “revision” privilege was inapplicable because 
petitioners failed to preserve the “arrangement” or 
“coordination” of the hard copy editions of the periodicals. The 
court asserted that, because a newspaper’s “initial page layout 
is lost, such as placement above or below the fold,” Cert. App. 
at 4a, the newspaper in digitized form has lost “most of its 
arrangement” and therefore its copyrightable identity, making 
it a new work. Id. 15a. 

In the first place, Section 201(c) plainly does not require 
that the electronic copies reflect the identical arrangement as 
the hard copy editions, for arrangement can be “revised” just as 
the selection of articles. 

29 As the district court correctly 
concluded, “selection alone reflects sufficient originality to merit 
copyright protection.” Cert. App. 69a. Thus, the Act expressly 
provides protection for materials “that are selected, 
coordinated, or arranged [to] constitute[ ] an original work 
of authorship.” 17 U.S.C. § 101 (emphasis added). 

Respondents’ contributions, moreover, are tagged with 
information — such as the author’s identity, the name of 

28. The analysis would be the same even if petitioners separated 
articles and transmitted them individually to NEXIS, so long as the 
electronic copies could be reasonably regarded as revisions of the hard 
copy publications. In order to prevail, respondents must identify a 
“work” that infringes the copyrights they hold in their individual 
contributions. The “work” in this instance is said to be the electronic 
copy of a periodical. For purposes of the infringement analysis, it makes 
no difference how the electronic copies, or the resulting libraries in 
which they reside, are assembled. 

29. Indeed, even the 1990 revised version of a 1980 encyclopedia 
expressly contemplated by the Act’s legislative history, see supra at 
26, would have a different arrangement. 

43 

the periodical and the page number and column in which it 
appears — that defines their existence in terms of the initial 
appearance of the hard copy version of the periodical. These 
contributions, therefore, are presented as part of “a particular 
identified periodical, or . . . periodicals,” Cert. App. 71a, just 
as is true, for example, of microfilm or hard copies stored 
on the shelves of library stacks. The only differences 
respondents identified in this case were those necessitated 
by the change in medium, e.g., replacement of typesetting 
commands with electronic markers (Garson Cert. Opp. 9), 
loss of the original layout, columnization and page-breaks, 
if any (Tasini Cert. Opp. 3), and the omission of certain print- 
specific visuals such as ads, charts and photographs (id.). 
Such changes, dictated by the space and other limitations of 
ASCII text technology, fall well within the permissible scope 
of changes authorized by the “any revision” privilege, and 
are less extensive than the differences that may exist, for 
example, between the approximately one dozen different 
daily print editions of the Times. 

Further, by focusing on paper-only arrangement, the 
Second Circuit’s decision conflicts with the Act’s bedrock 
principle of media neutrality: the differences identified by 
the Second Circuit as creating new infringing works — the 
exclusion of graphics and page layouts, and the ability to 
search articles by keywords — are inherent in, and thus 
dictated by, all sorts of media expressly contemplated by 
Congress, including such diverse formats as punch-cards, 
magnetic tapes and other forms of electronic storage. 
Electronic media, such as the NEXIS library, simply cannot 
duplicate print arrangements, because ASCII is a text- 
based, not photographical, code. See n.2 supra. The Second 
Circuit’s insistence on “page layout” retention thus is 
“senseless” 

30 and condemns an entire generation of 

30. See Robert C. Denicola, Copyright in Collections of Facts: 
A Theory for the Protection of Nonfiction Literary Works, 81 Colum. 
(Cont’d) 

44 

electronic copies as infringing, a result completely at odds 
with the plain language of the Act. It also would force users 
to search each stored periodical sequentially, a requirement 
that would, of course, defeat the purpose and great utility 
of electronic media. 

Consistent with the media-neutral approach of the 
entire Act, collective works are therefore defined 
disjunctively, as consisting of materials “that are selected, 
coordinated, or arranged” to make “an original work of 
authorship.” 17 U.S.C. § 101 (emphasis added). The Second 
Circuit improperly replaced the word “or” with “and,” 
thereby imposing on publishers of collective works an 
obligation to retain an “arrangement” that is not required 
by the Act. Preservation of selection alone adequately 
preserves the original copyrightable aspect of a collective 
work and paves the way for a permissible revision under 
Section 201(c) to be stored in a variety of electronic and 
other media. 

III. The Second Circuit’s Contrary Analysis Also Should 
Be Rejected Because It Conflicts With Fundamental 
Copyright Principles. 

Numerous commentators have warned of the devastating 
effects of the Second Circuit’s decision and the wholesale 
deletion of materials from electronic libraries it portends. 
See Cert. Pet. 13-14. This disruption is a function of the 
fact that the Second Circuit’s decision violates longstanding 
copyright principles. First, because multiple editions of a 
periodical are stored together electronically, the Second 
Circuit incorrectly identified a “new anthology” of multiple 

L. Rev. 516, 531 (1981) (making the point that, because digital 
information is stored in bits and bytes scattered throughout the 
storage medium, it is “senseless to seek . . . a specific, fixed 
arrangement of data. There is simply a collection of information 
stored in an electronic memory – information that can be arranged 
and retrieved in variations limited only by the capabilities of the 
computer and the sophistication of the retrieval program”). 
(Cont’d) 

45 

editions rather than a collection of individual revisions. 
Cert. App. 17a. Second, because researchers may retrieve 
individual articles, it regarded the electronic copies as akin 
to the impermissible exploitation of individual 
contributions. The Second Circuit thus characterized NEXIS 
as “comprising thousands or millions of individually 
retrievable articles taken from hundreds or thousands of 
periodicals [from which] articles . . . may be retrieved 
according to criteria unrelated to the particular edition in 
which the articles first appeared.” Id. 14a, 16a (emphasis 
added). 

As applied to the electronic copies involved in this case, 
the Second Circuit’s analysis cannot be reconciled with core 
copyright principles set forth in the Act or with this Court’s 
decisions in Feist and Sony. In addition to the manifest 
conflict with the Act’s bedrock principle of media neutrality, 
the Second Circuit’s reading of Section 201(c) cannot 
possibly be correct, because it would deem microfilm and 
microfiche to be infringing. Individual spools of microfilm 
routinely store multiple editions of a single periodical 
(often as much as a month’s worth), but this does not 
convert them into a “new anthology” of individual editions 
any more than does the binding together of a year’s worth 
of print periodical copies. 

31 Moreover, they are used, just 

31. Other examples are easily identified. Although Congress 
specifically intended, among other things, for a publisher of a 
volume of “a 1980 edition of an encyclopedia” to be able to 
“reprint an article” from that edition “in a 1990 revision,” 
H.R. Rep. No. 1476, at 122, J.A. 706a, in the Second Circuit’s view 
the same publisher could not, in order to make that encyclopedia 
easier to use, publish the revised 1990 copy on a CD-ROM with 
copies of other volumes comprising the rest of the encyclopedia. 
Such a revision would constitute a new and infringing collective 
work, by the Second Circuit’s reasoning, because the original 
contributions in each volume “may be retrieved according to criteria 
unrelated to the particular [volume] in which the articles first 
appeared.” Cert. App. 16a. Given that in the twelve years since the 
(Cont’d) 

46 

like the copies challenged by respondents, almost 
exclusively by researchers to locate and copy individual 
articles. Thus, whether one uses the Reader’s Guide to 
Periodical Literature to identify pertinent articles and to 
access them from paper periodicals or microfilm spools on 
shelves in a library’s stacks or uses the search engine and 
indices of NEXIS or UMI’s CD ROMs, the process and the 
copyright status of the works and copies used are equivalent 
in every sense. 

32 That a given search request may call for 
searching multiple libraries and produce results from 
multiple periodicals does not alter the compilation 
copyright of each individual periodical. 

first CD-ROM encyclopedia appeared “it has become by far the 
dominant format and has made encyclopedias far more available,” 
such a result is untenable. Matthew L. Wald, Reference Disks Speak 
Volumes, N.Y. Times, Feb. 26, 1998, at G12. The Second Circuit’s 
analysis creates risks to publishers and the public that are far from 
theoretical. National Geographic has been sued by freelance 
contributors for having reissued all of its prior paper copies on 30 
CD-ROM discs entitled “The Complete National Geographic 108 
Years of National Geographic Magazine on CD-ROM.” See Faulkner 
(Douglas) v. National Geographic Soc’y, No. 97 Civ. 9361 
(S.D.N.Y.); Faulkner (Sally) v. National Geographic Soc’y, No. 99 
Civ. 12488 (S.D.N.Y.); Greenberg v. National Geographic Soc’y, No. 
97-3924-civ (S.D. Fla.). 

32. The Second Circuit further erred by holding that the 
“any revision” language of Section 201(c) “protects only later 
editions of a particular issue of a periodical, such as the final edition 
of a newspaper.” Cert. App. 10a. Indeed, even this example of a 
permissible revision would be infringing under the Second Circuit’s 
insistence on the preservation of arrangements. The “final edition 
of a newspaper” often alters the “arrangement” of the earlier editions 
in significant ways, as when a breaking story, placed above the fold, 
might move an earlier story below the fold, or to a different page 
entirely. 

(Cont’d) 

47 

A. The Decision Below Conflicts With This Court’s 

Analysis Of Direct Copyright Infringement In Sony. 

The Second Circuit’s analysis was improperly end-user 
driven. Rather than carefully examining the contents of the 
allegedly infringing copies, it erred by allowing potential 
third-party retrievals of individual articles to determine 
whether there has been direct infringement. “Third party 
conduct would be wholly irrelevant in an action for direct 
infringement.” Sony Corp. of Am. v. Universal City Studios, 
464 U.S. 417, 446 (1984). Because the infringement claims 
in this case are based entirely on the petitioners’ own acts of 
reproducing and distributing copies of the particular 
collective works on CD-ROMs and in the NEXIS library, 
under fundamental copyright law, it was the content of those 
allegedly directly infringing copies, as they were created and 
fixed on an issue-by-issue basis, that should have been 
considered. 

33 This the Second Circuit failed to do, except 
for its erroneous and unsupported conclusion that the 
electronic copies involve “stripping” the periodicals into their 
component articles. Cert. App. 4a. 

The Second Circuit’s own common sense analysis 
in Matthew Bender & Co. v. West Publishing, 158 F.3d 
693 (CA2 1998), cert. denied, 526 U.S. 1154 (1999), 
demonstrates how irrelevant third-party use is in direct 
infringement claims involving the manipulation of database 
search engines. The Matthew Bender court rejected a direct 
infringement claim based on the very argument asserted here: 

33. The respondents themselves have admitted that “[t]his is not 
a case in which we have accused the defendants . . . of manufacturing 
or distributing machines or equipment that can be used by third parties 
in an infringing way.” J.A. 352a. Such a claim, respondents 
acknowledge, would have permitted the petitioners to raise such 
defenses as the Sony defense of “non-infringing uses.” Id. Because they 
did not assert such a claim, the only acts of reproduction and 
distribution properly before the Court are those that occurred when 
the publishers transmitted their periodicals to NEXIS and UMI, and 
when those licensees created the copies in dispute. 

48 

that data fixed in no particular manner (other than by 
coding) on a CD-ROM could be arranged by an end-user to 
create an infringing configuration. It recognized that 
“CD-ROM technology is different from paper . . . because 
the file-retrieval system allows users to retrieve cases in a 
variety of ways” that are unrelated to the original 
arrangement on the CD-ROM copy. Id. at 705. It refused, 
however, to take the erroneous next step of concluding that 
direct copyright infringement arises from a hypothetical 
user’s ability to create an infringing work using “electronic 
scissors.” See id. at 706. 

34 In both the UMI CD-ROM 
products and in NEXIS, it is the manipulation of the 
retrieval system — not the contents of any revised copy — 
that allows articles to be “recombined” with other articles 
in a new anthology or downloaded individually. Petitioners, 
therefore, never make any copy of an article that is or could 
be regarded as directly infringing. 

B. The Decision Below Conflicts With Congress’ 

Goal To Encourage The Development Of New 
Technologies And Will Result In Wholesale 
Deletion Of Freelance Contributions. 

This Court has stated its “consistent deference to 
Congress when major technological innovations alter the 
market for copyrighted materials.” Sony, 464 U.S. at 431. 
This basic precept ensures that, not only with respect to this 
case but even more generally, publishers and their licensees 
will be afforded certainty regarding the copyright status of 
their works as they invest in new technologies to promote 
“the general public good.” Twentieth Century Music Corp. 

v. Aiken, 422 U.S. 151, 156 (1975). Accordingly, this Court 
should reject the Luddite-like approach reflected in the 

34. In fact, far from showing that the copies in dispute were 
regularly used to access their individual Articles as such, at no point 
in this litigation did respondents ever demonstrate that, apart from 
their own searches, anyone had ever used the periodical copies in 
dispute to do so. 

49 

Second Circuit’s medium-specific analysis and leave in 
place the Section 201(c) compromise adopted by Congress 
and correctly applied by the district court. Sony, 464 U.S. 
at 431 (Congress has the “institutional ability to 
accommodate fully the varied permutations of competing 
interests implicated by ‘new technology.’ ”) 

The Second Circuit’s decision will have devastating 
real world effects if it is not reversed. Its holding that 
electronic copies at issue here infringe will render every 
publisher that distributes its issues electronically, and every 
database provider and every manufacturer of CD-ROMs that 
contain such periodicals, an infringer of copyright. 
Petitioners and those similarly situated will have no 
alternative but to destroy any CD-ROMs that contain 
freelance articles and remove all freelance contributions 
from electronic libraries, because they obviously cannot 
locate and negotiate with thousands of freelance authors, 
their heirs and/or assigns, in the face of the “tidal wave” of 
lawsuits respondent Tasini has threatened and has now 
begun to deliver. Cert. Pet. 12-13. In fact, publishers across 
the nation already have assembled instructions for their 
electronic copy licensees to begin the deletion process; but 
for the stay granted below and this Court’s having granted 
certiorari, the nation’s electronic archives would already 
have been rendered egregiously incomplete. 

35 

Such a result would be untenable, given Congress’ 
understanding of publishing practices and electronic 
information-storage and retrieval systems in 1976, and the 
long-standing reliance of publishers and their licensees for 
nearly twenty years thereafter, until this case was brought. 

See Sony, 464 U.S. at 456 (“One may search the Copyright 
Act in vain for any sign that the elected representatives of 

35. Michael Rogers & Norman Oder, U.S. News Pulls Microfilm 
Content, Library Journal, Oct. 1, 2000, at 14-15 (reporting that U.S. 
News and World Report has pulled freelance articles from microfilm 
as a result of the Second Circuit’s decision). 

50 

the millions of people who watch television every day have 
made it unlawful to copy a program for later viewing at 
home, or have enacted a flat prohibition against the sale of 
machines that make such copying possible.”) A proper 
analysis of Section 201(c) demonstrates that such a result 
is unnecessary as well. 

CONCLUSION 

For the foregoing reasons, this Court should reverse 
the judgment of the Second Circuit and remand with 
instructions that judgment be entered in favor of petitioners. 

Respectfully submitted, 

LAURENCE H. TRIBE 
Counsel of Record 
JONATHAN S. MASSEY 
Hauser Hall 420 
1575 Massachusetts Avenue 
Cambridge, MA 02138 
(617) 495-4621 

BRUCE P. KELLER 
JEFFREY P. CUNARD 
MICHAEL R. POTENZA 
PETER C. JOHNSON 
DEBEVOISE & PLIMPTON 
875 Third Avenue 
New York, NY 10022 
(212) 909-6000 

THOMAS C. GOLDSTEIN 
THOMAS C. GOLDSTEIN, P.C. 
4607 Asbury Place, NW 
Washington, DC 20016 
(202) 237-7543 

Attorneys for Petitioners 

1a 
Appendix 

APPENDIX — SELECTED PROVISIONS OF THE 
COPYRIGHT ACT OF 1976 

17 U.S.C. § 201(c) 

§ 201. Ownership of copyright 

* * * 

(c) Contributions to collective works. Copyright in each 
separate contribution to a collective work is distinct from 
copyright in the collective work as a whole, and vests initially 
in the author of the contribution. In the absence of an express 
transfer of the copyright or of any rights under it, the owner 
of copyright in the collective work is presumed to have 
acquired only the privilege of reproducing and distributing 
the contribution as part of that particular collective work, 
any revision of that collective work, and any later collective 
work in the same series. 

* * * 

17 U.S.C. § 101 

§ 101. Definitions 

Except as otherwise provided in this title, as used in this 
title, the following terms and their variant forms mean the 
following: 

An “anonymous work” is a work on the copies or 
phonorecords of which no natural person is 
identified as author. 

2a 
Appendix 

An “architectural work” is the design of a building 
as embodied in any tangible medium of expression, 
including a building, architectural plans, or 
drawings. The work includes the overall form as well 
as the arrangement and composition of spaces and 
elements in the design, but does not include 
individual standard features. 

“Audiovisual works” are works that consist of a 
series of related images which are intrinsically 
intended to be shown by the use of machines or 
devices such as projectors, viewers, or electronic 
equipment, together with accompanying sounds, if 
any, regardless of the nature of the material objects, 
such as films or tapes, in which the works are 
embodied. 

The “Berne Convention” is the Convention for the 
Protection of Literary and Artistic Works, signed at 
Berne, Switzerland, on September 9, 1886, and all 
acts, protocols, and revisions thereto. 

The “best edition” of a work is the edition, published 
in the United States at any time before the date of 
deposit, that the Library of Congress determines to 
be most suitable for its purposes. 

A person’s “children” are that person’s immediate 
offspring, whether legitimate or not, and any 
children legally adopted by that person. 

A “collective work” is a work, such as a periodical 
issue, anthology, or encyclopedia, in which a number 

3a 
Appendix 

of contributions, constituting separate and 
independent works in themselves, are assembled into 
a collective whole. 

A “compilation” is a work formed by the collection 
and assembling of preexisting materials or of data 
that are selected, coordinated, or arranged in such a 
way that the resulting work as a whole constitutes 
an original work of authorship. The term 
“compilation” includes collective works. 

“Copies” are 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. The term “copies” 
includes the material object, other than a 
phonorecord, in which the work is first fixed. 

“Copyright owner”, with respect to any one of the 
exclusive rights comprised in a copyright, refers to 
the owner of that particular right. 

A work is “created” when it is fixed in a copy or 
phonorecord for the first time; where a work is 
prepared over a period of time, the portion of it that 
has been fixed at any particular time constitutes the 
work as of that time, and where the work has been 
prepared in different versions, each version 
constitutes a separate work. 

4a 
Appendix 

A “derivative work” is a work based upon one or 
more preexisting works, such as a translation, 
musical arrangement, dramatization, 
fictionalization, motion picture version, sound 
recording, art reproduction, abridgment, 
condensation, or any other form in which a work 
may be recast, transformed, or adapted. A work 
consisting of editorial revisions, annotations, 
elaborations, or other modifications which, as a 
whole, represent an original work of authorship, is 
a “derivative work”. 

A “device”, “machine”, or “process” is one now 
known or later developed. 

A “digital transmission” is a transmission in whole 
or in part in a digital or other non-analog format. 

To “display” a work means to show a copy of it, 
either directly or by means of a film, slide, television 
image, or any other device or process or, in the case 
of a motion picture or other audiovisual work, to 
show individual images nonsequentially. 

An “establishment” is a store, shop, or any similar 
place of business open to the general public for the 
primary purpose of selling goods or services in 
which the majority of the gross square feet of space 
that is nonresidential is used for that purpose, and 
in which nondramatic musical works are performed 
publicly. 

5a 
Appendix 

A “food service or drinking establishment” is a 
restaurant, inn, bar, tavern, or any other similar place 
of business in which the public or patrons assemble 
for the primary purpose of being served food or 
drink, in which the majority of the gross square feet 
of space that is nonresidential is used for that 
purpose, and in which nondramatic musical works 
are performed publicly. 

The term “financial gain” includes receipt, or 
expectation of receipt, of anything of value, 
including the receipt of other copyrighted works. 

A work is “fixed” in a tangible medium of 
expression when its embodiment in a copy or 
phonorecord, by or under the authority of the author, 
is sufficiently permanent or stable to permit it to be 
perceived, reproduced, or otherwise communicated 
for a period of more than transitory duration. A work 
consisting of sounds, images, or both, that are being 
transmitted, is “fixed” for purposes of this title if a 
fixation of the work is being made simultaneously 
with its transmission. 

The “Geneva Phonograms Convention” is the 
Convention for the Protection of Producers of 
Phonograms Against Unauthorized Duplication of 
Their Phonograms, concluded at Geneva, 
Switzerland, on October 29, 1971. 

The “gross square feet of space” of an establishment 
means the entire interior space of that establishment, 

6a 
Appendix 

and any adjoining outdoor space used to serve 
patrons, whether on a seasonal basis or otherwise. 

The terms “including” and “such as” are illustrative 
and not limitative. 

An “international agreement” is — 

(1) the Universal Copyright Convention; 

(2) the Geneva Phonograms Convention; 

(3) the Berne Convention; 

(4) the WTO Agreement; 

(5) the WIPO Copyright Treaty; 

(6) the WIPO Performances and 
Phonograms Treaty; and 

(7) any other copyright treaty to which the 
United States is a party. 

A “joint work” is a work prepared by two or more 
authors with the intention that their contributions 
be merged into inseparable or interdependent parts 
of a unitary whole. 

“Literary works” are works, other than audiovisual 
works, expressed in words, numbers, or other verbal 
or numerical symbols or indicia, regardless of the 

7a 
Appendix 

nature of the material objects, such as books, 
periodicals, manuscripts, phonorecords, film, tapes, 
disks, or cards, in which they are embodied. 

“Motion pictures” are audiovisual works consisting 
of a series of related images which, when shown in 
succession, impart an impression of motion, together 
with accompanying sounds, if any. 

To “perform” a work means to recite, render, play, 
dance, or act it, either directly or by means of any 
device or process or, in the case of a motion picture 
or other audiovisual work, to show its images in any 
sequence or to make the sounds accompanying it 
audible. 

A “performing rights society” is an association, 
corporation, or other entity that licenses the public 
performance of nondramatic musical works on 
behalf of copyright owners of such works, such as 
the American Society of Composers, Authors and 
Publishers (ASCAP), Broadcast Music, Inc. (BMI), 
and SESAC, Inc. 

“Phonorecords” are material objects in which 
sounds, other than those accompanying a motion 
picture or other audiovisual work, are fixed by any 
method now known or later developed, and from 
which the sounds can be perceived, reproduced, or 
otherwise communicated, either directly or with the 
aid of a machine or device. The term “phonorecords” 
includes the material object in which the sounds are 
first fixed. 

8a 
Appendix 

“Pictorial, graphic, and sculptural works” include 
two-dimensional and three-dimensional works of 
fine, graphic, and applied art, photographs, prints 
and art reproductions, maps, globes, charts, 
diagrams, models, and technical drawings, including 
architectural plans. Such works shall include works 
of artistic craftsmanship insofar as their form but 
not their mechanical or utilitarian aspects are 
concerned; the design of a useful article, as defined 
in this section, shall be considered a pictorial, 
graphic, or sculptural work only if, and only to the 
extent that, such design incorporates pictorial, 
graphic, or sculptural features that can be identified 
separately from, and are capable of existing 
independently of, the utilitarian aspects of the article. 

For purposes of section 513, a “proprietor” is an 
individual, corporation, partnership, or other entity, 
as the case may be, that owns an establishment or a 
food service or drinking establishment, except that 
no owner or operator of a radio or television station 
licensed by the Federal Communications 
Commission, cable system or satellite carrier, cable 
or satellite carrier service or programmer, provider 
of online services or network access or the operator 
of facilities therefor, telecommunications company, 
or any other such audio or audiovisual service or 
programmer now known or as may be developed in 
the future, commercial subscription music service, 
or owner or operator of any other transmission 
service, shall under any circumstances be deemed 
to be a proprietor. 

9a 
Appendix 

A “pseudonymous work” is a work on the copies or 
phonorecords of which the author is identified under 
a fictitious name. 

“Publication” is the distribution of copies or 
phonorecords of a work to the public by sale or other 
transfer of ownership, or by rental, lease, or lending. 
The offering to distribute copies or phonorecords to 
a group of persons for purposes of further 
distribution, public performance, or public display, 
constitutes publication. A public performance or 
display of a work does not of itself constitute 
publication. 

“Registration”, for purposes of sections 205(c)(2), 
405, 406, 410(d), 411, 412, and 506(e), means a 
registration of a claim in the original or the renewed 
and extended term of copyright. 

To perform or display a work “publicly” means — 

(1) to perform or display it at a place open 
to the public or at any place where a 
substantial number of persons outside of a 
normal circle of a family and its social 
acquaintances is gathered; or 

(2) to transmit or otherwise communicate 
a performance or display of the work to a 
place specified by clause (1) or to the 
public, by means of any device or process, 
whether the members of the public capable 

10a 
Appendix 

of receiving the performance or display 
receive it in the same place or in separate 
places and at the same time or at different 
times. 

“Sound recordings” are works that result from the 
fixation of a series of musical, spoken, or other 
sounds, but not including the sounds accompanying 
a motion picture or other audiovisual work, 
regardless of the nature of the material objects, such 
as disks, tapes, or other phonorecords, in which they 
are embodied. 

“State” includes the District of Columbia and the 
Commonwealth of Puerto Rico, and any territories 
to which this title is made applicable by an Act of 
Congress. 

A “transfer of copyright ownership” is an 
assignment, mortgage, exclusive license, or any 
other conveyance, alienation, or hypothecation of a 
copyright or of any of the exclusive rights comprised 
in a copyright, whether or not it is limited in time or 
place of effect, but not including a nonexclusive 
license. 

A “transmission program” is a body of material that, 
as an aggregate, has been produced for the sole 
purpose of transmission to the public in sequence 
and as a unit. 

To “transmit” a performance or display is to 
communicate it by any device or process whereby 

11a 
Appendix 

images or sounds are received beyond the place from 
which they are sent. 

A “treaty party” is a country or intergovernmental 
organization other than the United States that is a 
party to an international agreement. 

The “United States”, when used in a geographical 
sense, comprises the several States, the District of 
Columbia and the Commonwealth of Puerto Rico, 
and the organized territories under the jurisdiction 
of the United States Government. 

For purposes of section 411, a work is a “United 
States work” only if — 

(1) in the case of a published work, the 
work is first published — 

(A) in the United States; 

(B) simultaneously in the United 
States and another treaty party or 
parties, whose law grants a term of 
copyright protection that is the 
same as or longer than the term 
provided in the United States; 

(C) simultaneously in the United 
States and a foreign nation that is 
not a treaty party; or 

12a 
Appendix 

(D) in a foreign nation that is not 
a treaty party, and all of the authors 
of the work are nationals, 
domiciliaries, or habitual residents 
of, or in the case of an audiovisual 
work legal entities with 
headquarters in, the United States; 

(2) in the case of an unpublished work, all 
the authors of the work are nationals, 
domiciliaries, or habitual residents of the 
United States, or, in the case of an 
unpublished audiovisual work, all the 
authors are legal entities with headquarters 
in, the United States; or 

(3) in the case of a pictorial, graphic, or 
sculptural work incorporated in a building 
or structure, the building or structure is 
located in the United States. 

A “useful article” is an article having an intrinsic 
utilitarian function that is not merely to portray the 
appearance of the article or to convey information. 
An article that is normally a part of a useful article 
is considered a “useful article”. 

The author’s “widow” or “widower” is the author’s 
surviving spouse under the law of the author’s 
domicile at the time of his or her death, whether or 
not the spouse has later remarried. 

* * * 

13a 
Appendix 

17 U.S.C. § 103 

§ 103. Subject matter of copyright: Compilations and 
derivative works 

* * * 

(b) The copyright in a compilation or derivative 
work extends only to the material contributed by 
the author of such work, as distinguished from the 
preexisting material employed in the work, and does 
not imply any exclusive right in the preexisting 
material. The copyright in such work is independent 
of, and does not affect or enlarge the scope, duration, 
ownership, or subsistence of, any copyright 
protection in the preexisting material. 

* * * *