No. 00-201 

In the 

Supreme Court of the United States 

ø∫ªø 

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

Petitioners, 
vs. 

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

Respondents. 
____________________________ 

ON PETITION FOR A WRIT OF CERTIORARI TO 
THE UNITED STATES COURT OF APPEALS 
FOR THE SECOND CIRCUIT 

RESPONDENTS’ BRIEF 

Also on the Brief: 

LINDA A. BACKIEL 
MICHAEL J. GAYNOR 
EMILY MARUJA BASS, ESQ. 
Counsel of Record for 

Respondents Barbara Garson 
and Sonia Jaffe Robbins 
GAYNOR & BASS 
535 Fifth Avenue, 23rd Floor 
New York, New York 10017 
(212) 953-4300 

i 

QUESTIONS PRESENTED 

1. Whether the privilege afforded newspaper and maga- 
zine publishers in § 201(c) to enable them to construct their 
“collective works” thereafter affords anyone — and, if so, 
who — the privilege of deconstructing those collective works 
and individually exploiting their freelance components? 

2. Whether it affords anyone the privilege of taking a con- 
tribution that originally appeared as part of one publication 
and reproducing it and making it available either as a stand- 
alone unit or in combination with articles from other pub- 
lications or periodical issues? 

3. Whether an electronic database that contains millions or 
billions of articles from tens of thousands of different publi- 
cations or from different issues of a publication constitutes a 
“revision” within the meaning of § 201(c) of each of the peri- 
odical issues from which an article or articles have been 
taken? 

ii 

TABLE OF CONTENTS 

Page 

Questions Presented ...................................................... 
i 

Table Of Contents ......................................................... 
ii 

Table Of Cited Authorities............................................. 
v 

Table Of Terms And Abbreviations Used In This Brief ... 
xi 

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

Statement Of The Case .................................................. 
1 

The Contributions, Collective Works And 
Databases At Issue In This Case ............................. 
2 

The Claims, Positions And Determinations 
In The Lower Courts .............................................. 
5 

The Issues Before This Court ................................. 
9 

Summary Of Argument ................................................. 
10 

Argument ...................................................................... 15 

I. The Statute And Its Plain Meaning ......................... 

15 

A. The Section 201(c) Privilege Is Non- 
Assignable, Non-Transferable And 
Non-Exclusive ................................................ 15 

1. A “Privilege” Is Not A “Subdivision 
Of An Exclusive Right.” ........................... 
15 

2. The Privilege Represents A Personal 

Exemption From Liability And Not 
A Transferable Ownership Interest 
In Property................................................ 17 

B. The Scope Of The Privilege: Publishers Are 

Given A Privilege To Include A Contribution 
In A Particular “Series.” ................................. 
20 

C. The Scope Of The Privilege: Publishers 

Are Not Given The Privilege Of Public 
“Display” ........................................................ 25 

iii 

II. The Legislative History Confirms The Plain 
Meaning Of The Provision ..................................... 
26 

A. The History Of Section 201(c) Confirms 

That The Privilege Is Not Transferable ........... 

26 

B. The Legislative History Confirms That 

The Privilege Was Only Meant To Be 
Exercised Within The Same “Series.” ............. 

29 

C. Petitioners’ Claim That § 201(c) Was Intended 
To Accommodate Electronic Information 
Storage And Retrieval Systems Is Erroneous ... 
30 

III. The Case Against Petitioners Is Indisputable .......... 
32 

A. The Case Against Petitioners Is Clear 

On The Face Of The Statute ........................... 

32 

1. The Case Against The Print Publishers 

Is Clear ..................................................... 

32 

2. The Case Against The Database 

Producers Is Clear..................................... 

33 

B. The Case Law Is In Complete Accord............. 
36 

C. Feist And The Majority And Dissenting 

Opinions In Abend Are In Accord................... 

38 

IV. Petitioners’ Myriad Defenses.................................. 
41 

A. The “We’re Clean, It Is The End-Users 

Who Are Guilty” Defense............................... 

41 

B. “The Medium Made Me Do It” Defense ......... 
41 

C. The “Inchoate Copy” Defense......................... 
43 

D. The “Enough Has Been Preserved” Defense .... 
44 

E. The “Simultaneous” or “Aggregate Uses” 

Defense .......................................................... 46 

F. And, Finally, The In Terrorem Defense........... 
47 

V. The Judgment Of The Second Circuit Can Be 

Affirmed On Two Additional Grounds ................... 48 

iv 

VI. There Is No Conflict Between The Second 
Circuit’s Decision And The Seminal Decisions 
Of This Court. Those Decisions Are Entirely 
Consistent With, Indeed Supportive Of, 
The Second Circuit Decision .................................. 
49 

A. The Conflict With Feist Has Proved 

To Be Illusory................................................. 

49 

B. The Conflict With Sony Has Proved 

To Be Illusory................................................. 

49 

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

Appendix I — 
Letter from the Register of Copyrights 

to Congressman James P. McGovern 
Regarding NY Times v. Tasini, as Set 
Forth in the Congressional Record 
(Feb. 14, 2001) ..................................... 

A-1 

Appendix II — Selected Provisions of the Copyright 

Act of 1976........................................... A-9 

v 

TABLE OF CITED AUTHORITIES 

Page(s) 

Cases: 

Atari Games Corp. v. Nintendo, 975 F.2d 832 
(9th Cir. 1992)........................................................ 
37 

Basic Books, Inc. v. Kinko’s Graphics Corp., 
758 F. Supp. 1522 (S.D.N.Y. 1991) ........................ 
34 

Burrow-Giles Lithographic Co. v. Sarony, 
111 U.S. 53 (1884) ................................................. 
44 

Chesapeake & O.R. Co. v. Miller, 114 U.S. 176 
(1885)..................................................................... 17 

Community for Creative Non-Violence v. Reid, 
490 U.S. 730 (1989) ............................................... 
21 

DSC Communications Corp. v. Pulse Communications, 
170 F.3d 1354 (Fed. Cir. 1999), cert. den’d and mot. 
granted, 528 U.S. 923 (1999) ................................. 
37 

EPM Communications, Inc. v. Notara, Inc., 
2000 U.S.Dist. LEXIS 11533 (S.D.N.Y. 
Aug. 11, 2000) ....................................................... 
45 

Feist Publications, Inc. v. Rural Telephone 

Service Co., 499 U.S. 340 (1991)........... 
9, 12, 38, 45, 49 

Franz Chem. Corp. v. Philadelphia Quartz Co., 
594 F.2d 146 (5th Cir. 1979) .................................. 
19 

General Talking Pictures Corp. v. Western Elec. Co., 
304 U.S. 175 (1938), adhered to, 305 U.S. 124, 
reh’g den’d, 305 U.S. 675 (1939) ........................... 
18 

Gilson v. Republic of Ireland, 787 F.2d 655 
(D.C. Cir. 1986) ..................................................... 
19 

Goldstein v. California, 412 U.S. 546 (1973).............. 
44 

Gutierrez v. Bordallo, 528 U.S. 250 (2000) ................ 
21 

Harper & Row, Pubs. v. Nation Enters., 471 U.S. 539 
(1985)..................................................................... 45 

vi 

Harris v. Emus Records Corp., 734 F.2d 1329 
(2d Cir. 1984)......................................................... 
18 

Ilyin v. Avon Publications, Inc., 144 F. Supp. 368 
(SDNY 1956) ......................................................... 
19 

International News Service v. Associated Press, 
248 U.S. 215 (1918) ............................................... 
46 

Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 

F.3d 1567 (Fed. Cir. 1997), reh’g den’d, en banc, 
1997 U.S. App. LEXIS 15403 (1997) ..................... 

19 

Los Angeles News Serv. v. Tullo, 973 F.2d 791 
(9th Cir. 1992)........................................................ 
37 

MAI Sys. Corp. v. Peak Comp., 991 F.2d 511 (9th Cir. 
1993), cert. dismissed, 510 U.S. 1033 (1994).......... 
37 

Matthew Bender & Co., Inc. v. West Pub- 
lishing Co., 158 F.3d 693 (2d Cir. 1998), 
cert. den’d, 526 U.S. 1154 (1999)............... 
12, 39, 44, 45 

Mazer v. Stein, 347 U.S. 201 (1954) ........................... 
44 

Picard v. East T., V. & G.R. Co., 130 U.S. 637 
(1889)..................................................................... 17 

PPG Industries Inc. v. Guardian Industries Corp., 
597 F.2d 1090 (6th Cir. 1979), cert. den’d, 444 
U.S. 930 (1979) ...................................................... 
19 

Princeton University Press v. Michigan Document 

Services, Inc., 99 F.3d 1381 (6th Cir. 1996) 
(en banc), cert. den’d, 520 U.S. 1156 (1997) .......... 

34, 37 

Rodriguez v. Compass Shipping Co., 451 U.S. 596 
(1981)..................................................................... 21 

Rohauer v. Killiam Shows, Inc., 551 F.2d 484 
(2d Cir.), cert. den’d, 431 U.S. 949 (1977).............. 
40 

Russell v. Price, 612 F.2d 1123 (9th Cir. 1979), 
cert. den’d, 446 U.S. 952 (1980)............................. 
16 

Ryan v. Carl Corp., 23 F.Supp. 2d 1146 
(N.D.Cal. 1998)...................................................... 47 

vii 

Sega Enterprises v. Accolade, No. 92-15655 1993, 

U.S.App. LEXIS 78 (9th Cir. Jan. 6, 1993)............. 

37 

Sony Corporation of America v. Universal City 

Studios, Inc., 464 U.S. 417 (1984) ................ 
9, 13, 47-50 

Stenograph LLC v. Bossard Assocs., 144 F.3d 96 
(D.C. Cir. 1998) ..................................................... 
37 

Stewart v. Abend, 495 U.S. 207 
(1990).............................................. 10, 16, 18, 38-40, 48 

Triad Sys. Corp. v. Southeastern Express Co., 64 F.3d 
1330 (9th Cir. 1995), cert. den’d, 516 U.S. 1145 
(1966)..................................................................... 37 

Unarco Industries, Inc. v. Kelley Co., 465 F.2d 1303 
(7th Cir. 1972), cert. den’d, 410 U.S. 929 (1973).... 
19 

United States v. Ryan, 284 U.S. 167 (1931) ................ 
21 

United States v. White, 322 U.S. 694 (1944) ............... 
17 

United States National Bank of Oregon v. Independent 

Insurance Agents of America, Inc., 508 U.S. 439 
(1993)..................................................................... 21 

Urantia Found. v. Maaherra, 114 F.3d 955 
(9th Cir. 1997)........................................................ 
37 

U.S. Constitution: 

Article I, Section 8, Clause 8 ...................................... 
16 

U.S. Statutes 
(the 1976 Copyright Act, unless otherwise noted): 

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

17 U.S.C. § 102.......................................................... 
12 

17 U.S.C. § 102(b) ..................................................... 
44 

17 U.S.C. § 103(b) ..................................................... passim 

17 U.S.C. § 106.......................................................... 
5, 41 

17 U.S.C. § 106(3) ..................................................... 
18 

17 U.S.C. § 106(5) ........................................ 18, 25, 26, 30 

viii 

17 U.S.C. § 107.......................................................... 
31 

17 U.S.C. § 108.......................................................... 
31 

17 U.S.C. § 109.......................................................... 
31 

17 U.S.C. § 109(a)...................................................... 
17 

17 U.S.C. § 109(c)...................................................... 
17 

17 U.S.C. § 110.......................................................... 
31 

17 U.S.C. § 111.......................................................... 
31 

17 U.S.C. § 112.......................................................... 
31 

17 U.S.C. § 113.......................................................... 
31 

17 U.S.C. § 114.......................................................... 
31 

17 U.S.C. § 115.......................................................... 
31 

17 U.S.C. § 116.......................................................... 
31 

17 U.S.C. § 117.......................................................... 
31 

17 U.S.C. § 118.......................................................... 
31 

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

17 U.S.C. § 201(d)(2)................................................. 15, 16 

17 U.S.C. § 202.......................................................... 
17 

17 U.S.C. § 204.......................................................... 
28 

17 U.S.C. § 501.......................................................... 
10 

1909 Copyright Act, 17 U.S.C. § 3 (1976 ed.) ............ 
40 

1909 Copyright Act, 17 U.S.C. § 7 (1976 ed.) ............ 
40 

Other Authorities: 

Black’s Law Dictionary (Rev. 4th ed. 1968) ............... 
18 

Stephen Breyer, “On The Uses Of Legislative History 
In Interpreting Statutes,” 65 S.Cal.Law Rev. 845, 
reprinted in 3 Singer, Sutherland Stat. Const. at 376 
(5th ed. 1993) ......................................................... 
21 

Copyright Law Revision, Part 1 (or 1961 Report)....... 
26, 27 

Copyright Law Revision, Part 2.................................. 26 

ix 

Copyright Law Revision, Part 3.................................. 27, 28 

Copyright Law Revision, Part 6 (or Supplementary 

Report) ................................................................... 13 

Copyright Law Revision: Hearings on H.R. 4347, 
5680, 6831, 6835 before Subcomm. No. 3 of House 
Comm. on Judiciary, 89 

th Cong., 1 

st Sess. (1965).... 
30 

Copyright Law Revision: Hearings before Subcomm. 
on Patents, Trademarks and Copyrights of Senate 
Comm. on Judiciary, 89 

th Cong., 1 

st Sess. (1965).... 
30 

Copyright Law Revision: Hearings before Subcomm. 
on Patents, Trademarks and Copyrights of Senate 
Comm. on Judiciary, 90 

th Cong., 1 

st Sess. (1967).... 
30 

Copyright Office Circular 65, Copyright Registration 
for Automated Databases........................................ 
35 

John F. Hayden, Copyright Protection for Computer 

Databases After Feist, Harvard J. Law & Tech. 215 
(1991)..................................................................... 36 

H.R. Rep. No. 83, 90 

th Cong., 1 

st Sess. (1967) ............ 
31 

H.R. Rep. No. 1476 ....................................... 
24, 29, 36, 38 

H.R. Rep. No. 2237, 89 

th Cong., 2d Sess. (1966) ........ 
30 

3 M. & D. Nimmer, Nimmer on Copyright 
(1996 ed.) ............................................................... 
18 

“A Win for Intellectual Property,” Editorial in 

The New York Times, A 30 (Feb. 14, 2001)............. 

35 

“Whither Napster?: The music business must find 
a way to charge for Internet swaps so creators 
can benefit,” Editorial in Newsday, A 30 (Feb. 14, 
2001)...................................................................... 35 

Patry Report ............................................................... 
30 

Marybeth Peters, The Copyright Office and Form C 

Requirements of Registration of Claims to Copyright, 
17 U. Dayton L. Rev. 737 (1992)............................ 36 

x 

Letter from Marybeth Peters, Register of Copyrights, 
to Congressman James P. McGovern, Regarding 
NY Times v. Tasini, as set forth in The Congres- 
sional Record (Feb. 14, 2001)........................... 

2, 26, 50 

P.L. 93-573, 93rd Cong., 2d Sess. (1974) ................... 
31 

A Report on Legal Protection for Databases, 

A Report Of The Register of Copyrights, 
U.S. Copyright Office, August 1997....................... 

35 

S.Rep. No. 473 ........................................................... 
38 

William S. Strong, Database Protection After Feist v. 

Rural Telephone Co., 41 Journal of the Copyright 
Society 34 (1994) ................................................... 
36 

Webster’s Third New International Dictionary 
(1976)..................................................................... 17 

8 Wigmore, Evidence (1961)...................................... 17 

xi 

TABLE OF TERMS AND ABBREVIATIONS 
USED IN THE BRIEF 

With Reference To Parties: 

Petitioners Defendants The New York Times Co., 

Inc., Newsday, Inc., The Time Inc. 
Magazine Co. (“Time Inc.”), LEXIS/ 
NEXIS (or “Mead”) and University 
Microfilms International (or “the UMI 
Company”) 

Respondents Plaintiffs Barbara Garson and 

Sonia Jaffe Robbins 

With Reference To Briefs: 

Cert.Pet. The Petition For a Writ Of Certiorari 

(__a) References To Pages In The Appendix 

To The Petition For Certiorari. This 
Includes References To The Opinions 
Of The District Court and Second 
Circuit In This Case. 

Cert.Reply Petitioners’ Reply In Further Support 

Of Their Petition For Certiorari 

Pet.Bf. Petitioners’ Brief On The Merits 

Publishers’ 
Amicus 

Brief For Advance Publications, Inc., 
et al, Amici Curiae, In Support Of 
Petitioners 

Database 
Producers’ Amicus 

Brief For The Software & Information 
Industry Association et al., Amici 
Curiae, In Support Of Petitioners 

NGS Amicus 
Brief Of Amicus Curiae The National 

Geographic Society In Support Of 
Petitioners 

xii 

AIPLA Amicus 
Brief For Amicus Curiae American 

Intellectual Property Law Association 
In Support Of Neither Party 

Burns Amicus 

Brief Amici Curiae Of Ken Burns, 

Doris Kearns Goodwin et al, In Support 
of Petitioners 

With Reference To Statutes: 

“Act” or 
“1976 Act” 
Copyright Act of 1976, codified at 
Title 17, U.S.C. 

1909 Act 

Copyright Act of 1909, ch. 320, 35 Stat. 

1075 (codified at former Title 17, 
U.S.C.), repealed by Copyright Act 
of 1976, Pub.L. No. 94-553 

With Reference To Legislative History: 

Copyright Law 
Revision, Part 1 
(LVI 10 et seq.) 
Report of the Register of Copyrights 
on the General Revision of the U.S. 
Copyright Law, 87th Cong., 1st Sess., 
Copyright Law Revision (H. Judiciary 
Comm. Print 1961) 

Copyright Law 
Revision, Part 2 
(LVI 20 et seq.) 

Discussion and Comments on Report 
of the Register of Copyrights on the 
General Revision of the U.S. Copyright 
Law, 88th Congress, 1st Sess., Copy- 
right Law Revision, Part 2 (H. Judiciary 
Comm. Print 1963) 

Copyright Law 
Revision, Part 3 
(LVI 63 et seq.) 

Preliminary Draft for Revised U.S. 
Copyright Law and Discussions and 
Comments on the Draft, 88th Congress, 
2d Sess., Copyright Law Revision, 
Part 3 (H. Judiciary Comm. Print 1964) 

xiii 

Copyright Law 
Revision, Part 6 
(LVI 129 et seq.) 
Supplementary Report of the Register of 
Copyrights on the General Revision of 
the U.S. Copyright Law; 1965 Revision 
Bill, 89 

th Cong., 1 

st Sess. 

H.R.Rep. No. 1476 
(LVI 266 et seq.) 

th Cong., 2d 
Sess. (1975), reprinted in 1976 U.S. 
Code Cong. & Ad. News 5659 

Patry Report 
(LVI 299 et seq.) 

H.R. Rep. No. 1476, 94 

Expert Witness Report of Professor 
William Patry, Together with Excerpts 
from Legislative History 

S. Rep. No. 473 
(LVI 241 et seq.) 

S. Rep. No. 473, 94th Cong., 1st Sess. 
(1975) 

To The Joint Appendix, Lodgings and Record: 

J.A. ___ 
References to Pages In the Joint 

Appendix 

LVI ___ 

References to Pages in Volume 1 

Of The Lodging (Legislative History) 

LVII ___ 

References To Pages in Volume 2 

Of The Lodging (Articles and Regis- 
trations) 

BA ____ 

References To Paras. In the Bass 

Affidavit Submitted In Support of 
Plaintiffs’ Motion For Summary 
Judgment (J.A. 65a-115a) 

Exh. __ 

References To Exhibits Attached To 

The Bass Affidavit In The Underlying 
Record 

KL Letter, Dated December 24, 1996, 

From Bruce Keller To The District 
Court, District Court Record, Item 56 

Newsday RRA 
Responses by Newsday To Requests To 

Admit, Attached To The Bass Affidavit 
As Exhibit 22 

xiv 

M_____ References To Pages In The Documents 

From Mead Attached To The Bass Affi- 
davit As Exhibit 49 

U_____ References To Pages In The Documents 

From UMI Attached To The Bass Affi- 
davit As Exhibit 50 

T______ References To Pages In The Documents 

From Time Inc. Attached To The Bass 
Affidavit As Exhibit 41 

To Oral Argument And The CD-ROM Demonstration 
Before The District Court: 

OA Transcript Of The Oral Argument 

Before The District Court 
(October 17, 1996) 

D Transcript Of The Demonstration 

By Defendants Of The CD-ROM 
Technology (December 10, 1996). 

1 

STATUTORY PROVISIONS INVOLVED 

This case requires the interpretation of the Copyright Act 
of 1976, 17 U.S.C. §101 et seq., and two provisions in parti- 
cular: § 103(b), which petitioners have, in large part, attempted 
to read out of the statute, and § 201(c), which they have at- 
tempted to reduce to two words. Section 201(c), which governs 
freelance contributions in collective works, states in full as 
follows: 

(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 repro- 
ducing 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. 

Section 103(b) and other relevant provisions of the Act are 
set forth in Appendix II to this brief. 

STATEMENT OF THE CASE 

There comes a time in the life of an automobile when the 
vehicle is worth more disassembled than left put together. At 
that point, the car is taken apart, and its parts are sold off — 
the engine, the muffler, the bumpers, fenders, doors, the front 
and back windshields, and even the hubcaps may be sold 
separately by used-parts suppliers. 

The same fate now awaits today’s newspaper or magazine 
and tomorrow’s literary or social science journal. Such publi- 
cations have a short shelf life: They quickly become “yester- 
day’s papers.” 

But after the publications no longer have any value at the 
newsstand, they still have plenty of value when they’re disas- 
sembled and the “parts” — i.e., articles, reviews, op-ed pieces, 
etc. — are put up for sale. 

2 

As a consequence, even before the presses cool, many of 
the publications’ component parts are sent off to LEXIS/ 
NEXIS or the UMI Company, where the parts experience a 
second life. 

Petitioners attempt to avoid the obvious implications of 
their acts by insisting over and over again that what the print 
publishers transmitted to the database producers and the latter 
placed on-line and on-disc were simply “electronic copies” 
or “revisions” of the print publishers’ collective works. No 
amount of mantric repetition will make a heap of spare parts 
into a revised Cadillac, or the text of each of the articles in 
yesterday’s New York Times into a revised edition of the 
newspaper. 

The record, that is the facts, are to the contrary. The data- 
bases contain not “any revisions” of the publishers’ collective 
works, but discrete articles. See BA at ¶¶ 11-27, J.A. 72a- 
84a. Both courts below so found. (3a, 4a, 5a, 14a, 102a). 

Accordingly, the Court of Appeals’ decision in this matter 
should be affirmed, as the Register of Copyrights herself re- 
cently urged in a letter introduced into the Congressional Re- 
cord. That letter is annexed hereto as Appendix I. 

The Contributions, Collective Works And Databases 
At Issue In This Case: 

Respondents, six writers who authored a total of twenty-one 
freelance articles, sued two sets of petitioners: three print- 
publishers (The New York Times, Newsday and Time Inc. 
Magazine Co.) and two database producers (LEXIS-NEXIS 
or “Mead” and the UMI Company). 

Each of these articles originally appeared in a distinct issue 
of a newspaper or magazine: twelve in issues of The New 
York Times, eight in issues of Newsday, and one in an issue 
of Sports Illustrated. BA Chart, J.A. 68a-69a. Each of these 
issues appeared in a variety of editions. See post at 24-25. 

Respondents Garson’s and Robbins’ articles were written 
for Newsday, which, within 24 hours of publication, provided 
discrete electronic files — each containing one article — to 

3 

Mead for the purpose of their being incorporated into NEXIS’ 
database. BA ¶¶ 12, 12, J.A. 73a-74a; Williams Aff. ¶¶ 26, 29, 
J.A. 135a-136a. None of these files contained any of the type- 
setting instructions or codes that had once enabled the article 
to be printed out and fitted into a collective work. BA ¶¶ 13, 
J.A. 74a-75a; Exh. 35, Skinner Depo. 38. At the same time, 
each file contained newly-added codes and keywords to make 
the article individually retrievable after being added to the data- 
base. BA ¶¶ 13, 14, J.A. 74a-78a; Williams Aff., J.A. 133a- 
136a; Exh. 35, Skinner Depo. 15, 18. 

The NEXIS on-line database is one of three databases in- 
volved in this case. The other two are the New York Times 
On Disc (“NYTO”) and the General Periodicals On Disc 
(“GPO”). None of these databases stores intact “collective 
works.” BA ¶¶ 9-54, J.A. 72a-96a, Williams Aff. ¶¶ 18, 31- 
32, 42, J.A. 132a, 137a, 140a. Rather, each stores articles and 
stories from myriad different collective works and makes 
them retrievable on a variety of bases. Exh. 22, Newsday 
RRA 13, 14. NEXIS and NYTO reproduce only the text of 
an article; “there are no photographs or captions or columns 
of text.” (16a). See also LVII 39-110, 111-133. GPO makes 
“article copies” available, meaning that an article will appear 
in the context of a page. LVII 134-154.1 In other words, if an 
article begins on page 3 of an issue of a newspaper or maga- 
zine and continues (and ends) on page 45, the article as re- 
trieved from the GPO database will consist of those two pages. 
LVII134-154; D 11. In no instance will the retrieval of a par- 
ticular article from any of the three databases retrieve articles 
that appeared on other pages of the newspaper or the collec- 

1 See also J.A. 331a (“GPO . . . provides exact reproductions of articles 
in image format from approximately 200 of the most frequently used 
general-interest periodicals”); 332a: 

General Periodicals Ondisc . . . allow[s] researchers to quickly 
identify and retrieve articles of interest. Users search the 
abstract-and-index database, locating and reviewing relevant 
citations and abstracts, then retrieve and print complete 
article copies from the image database. . . . (emphasis added). 

4 

tive work as a whole. Id.; Williams Aff. at ¶¶ 19-20, J.A. 
132a-133a. 

Petitioners are correct that among all the searches that a user 
could conduct, there is one search — the “date and periodical 
search” that would enable the user to “generate all of the ar- 
ticles — and only those articles — appearing in a particular 
periodical on a particular day.” Pet.Bf. 4. This fact confirms 
that the databases do not contain fixed copies of the print 
publishers’ collective works, since the search can produce 
nothing but a series of “individual hits,” each corresponding 
to a separate and discrete article. (30a). See also Exh. 31, 
Guiant Depo. 81-82; Exh. 34, Petrosino Depo. 132, J.A. 202a; 
J.A. 363a-364a at ¶ 14; 367a at ¶ 8; 370a at ¶ 9; 472a at ¶ 8, 
474a at ¶ 16, 475a at ¶ 23, 477a at ¶ 33, There is no mechan- 
ism permitting the entire collective work to be retrieved as 
a single unit, simply and without manipulation of the data in 
the database. See Petrosino Depo., J.A. 201a; Guiant Depo., 
J.A. 195a. Thus there is no “embodiment” of the collective 
work (in either an original or revised form) in the database. 
Before an embodiment of the entire collective work can be 
perceived, it first has to be created by the end user. KL 7.2 
What do exist in the databases in a fixed, stable and per- 
manent form are copies of individual articles. BA ¶¶ 40-41, 
J.A. 89a-90a. While the vast majority of these copies, written 
by staff members or on a “work-for-hire” basis, do not vio- 
late the Act, those written by plaintiff freelance authors are 
infringing.3 

2 Petitioners acknowledged in this letter that articles in a database are not 
“stored in discrete places on computer disks or drives in a manner that 
directly corresponds to the sequence in which they appear in the analog 
world . . .” KL 10. They claimed, however, that it was not important how 
data was actually organized on a hard drive, but only how it could be 
reorganized in accordance with a user’s wishes. KL 7. In this connection, 
they noted that articles in the database’s text file — otherwise known as 
the “lib.ful file” — could be reorganized “on an issue-by-issue basis 
whenever a user wishes to access the information that way.” KL 7 (em- 
phasis added). 

3 Microfilm is not at issue in this case because it is not infringing. And, it 
is not infringing because it allows the collective work to be “fixed” in the 

5 

The Claims, Positions And Determinations In The 
Lower Courts 

Respondents claimed: (1) the print publishers directly in- 
fringed their copyrights when they reproduced, licensed and 
distributed respondents’ articles to the database producers, 
and (2) the database producers directly infringed their rights 
when they incorporated these articles into the three databases 
and reproduced the articles both before and after doing so. 
Respondents also charged both sets of petitioners with direct 
infringement by violating respondents’ exclusive right under 
§106 of the Act to authorize third parties to reproduce, dis- 
play, download and distribute their contributions as separate 
and discrete works. 

Contrary to petitioners’ suggestion (Cert.Pet. 9, 24, 25), res- 
pondents never asserted that any defendant was vicariously 
liable for infringement by end-users who retrieved, copied or 
read their articles. Respondents did, however, charge the pub- 
lisher petitioners with vicarious and contributory liability for 
the database petitioners’ infringements. 

Although petitioners repeatedly urged it to do so, the Dis- 
trict Court rejected their proposed finding that the database 
petitioners placed “electronic copies” or “versions” of the print 
publishers’ collective works into their on-line and CD-ROM 
databases. It recognized that, as a result of the publisher peti- 
tioners’ day-long process of preparing articles that had ap- 
peared in their newspapers and magazines for incorporation 
into the databases, much of what made the periodicals “col- 

medium of expression as an integral unit that includes component contri- 
butions. Because the contributions are not fixed separately and apart from 
the collective work, they cannot be retrieved independently. Regardless 
of what researchers subsequently choose to focus on, therefore, microfilm 
inevitably takes them to the entire collective work. OA 66 (comments by 
the District Court). See also Smith Aff., J.A. 152a-160a; Williams Aff. ¶¶ 
11(c), 18, 23, 31, J.A. 128a, 132a, 134a, 137a. Any database sharing these 
same characteristics would, presumably, be similarly protected by the 
§ 201(c) privilege — provided that the privilege extends to all media. (But 
see discussion, post, at Points I(C) and II(C).) There are no such databases 
in this case. 

6 

lective works” was lost or eliminated. (4a, 14a-16a, 72a, 73a). 
Thus it determined as a matter of fact, that articles that had 
originally appeared together in a fixed relation as part of a 
particular collective work were dispersed throughout the data- 
bases. (64a; D 45) It further found that both NEXIS and the 
NYTO database store and display individual articles, not col- 
lective works. (102a).4 

It also determined, however, as a matter of law that each of 
the databases constituted a “revision” of a publication within 
the meaning of Section 201(c). The Court so ruled, because: 
(1) when retrieved from a database, the article is displayed 
together with a citation to the periodical issue in which it 
originally appeared (71a, 96a, 100a); and (2) notwithstanding 
that the articles that originally appeared together in an issue 
are no longer physically grouped together as a unit, they are 
all present somewhere in the database. (70a, 96a, 98a, 99a n.7, 
100a, 101a). 

On appeal, rather than embrace the District Court’s reason- 
ing, petitioners sought to revise its factual findings. Discarding 
the District Court’s ruling that the databases constituted “re- 
visions” of individual periodical issues, petitioners reverted 
to the argument that the databases contained “revisions” of 
periodicals.5 

Like the District Court, the Court of Appeals rejected peti- 
tioners’ contentions that the databases contained “copies”, “ver- 
sions” or “revisions” of collective works, finding that what they 

4 Petitioners claim (Cert.Reply 7) that the District Court was simply “de- 
scri[bing] . . . respondents’ arguments” when it stated in its Opinion (102a) 
that “NEXIS and “The New York Times OnDisc’ . . . are text based 
systems which store and display articles individually.” While the Court 
began by laying out respondents’ position on that page, it clearly went 
beyond that. We respectfully refer the Court to the Opinion. 

5 Echoing a statement by the American Society of Media Photographers 
that “a bookshelf [could not be considered] a ‘revision’ of a book just 
because it holds one,” petitioners stated in their brief on appeal, “That is 
correct . . . and under the Act, a CD-ROM containing many books is not a 
revision simply because it holds many.” Appellees’ Bf. 60 n. 49. See also 
OA 12, where petitioners first took this position. 

7 

“contained” was individual articles. (2a, 4a, 5a, 14a). “NEXIS 
does almost nothing to preserve the copyrightable aspects of 
the Publishers’ collective works, ‘as distinguished from the 
preexisting material employed in the work.’ 17 U.S.C. § 103 
(b),” the Court said. (14a). It is significant in this connection 
“that neither the Publishers nor NEXIS evince any intent to 
compel, or even to permit, an end user to retrieve an indi- 
vidual work only in connection with other works from the 
edition in which it ran,” the Court continued. (15a-16a). On 
the contrary, what they fix in the computer servers, discs and 
drives and make available to end users are “the preexisting 
materials that belong to the individual author under Sections 
201(c) and 103(b).” (16a). They make these materials avail- 
able, moreover, not as a unitary or “collective whole,” but in 
contribution-size bits and pieces. (6a-7a; 4a (“After Mead . . . 
codes the individual files, the pieces are incorporated in the 
NEXIS database.”) 

As a result, articles that once were an integral and insep- 
arable part of particular print collective works are “now avail- 
able . . . [to] be retrieved individually or in combination with 
other pieces originally published in different editions of the 
[same] periodical or in different periodicals.”6 (6a-7a). They 
are not fixed or stored in any of the databases as part of a 
fixed copy of a collective work. (4a). 

The Court of Appeals also found that the databases did not 
legally constitute any one of the three collective works pro- 
vided for in § 201(c). Because petitioners claimed only the 
protection of the second (“revision”) clause of § 201(c), the 
Court identified “[t]he crux of the dispute” as “whether one or 
more of the pertinent electronic databases may be considered 

6 By analogizing to “library stacks” at pages 3-4 of their brief, petitioners 
inadvertently create the impression that the “libraries” provided for in a 
search and retrieval program correspond to physical locations on a data- 
base. See also Pet.Bf. 46 and Database Producers’ Amicus 19. They do not. 
Libraries are simply “logical groups” of electronic files that share a com- 
mon sequence in their file numbers. Exh. 34, Petrosino Depo. 28. Files 
sharing these common file number sequences may be located anywhere. 

8 

a “revision” of the individual periodical issues from which the 
articles were taken.” (5a). 

It answered that question by looking at the plain meaning 
and structure of the statute, noting that “[u]nder ordinary prin- 
ciples of statutory construction, the second clause must be 
read in the context of the first and third clauses.” (9a-10a). It 
then applied this unremarkable principle to the concrete facts 
before it, reasoning: “The first clause sets the floor, so to speak, 
of the presumptive privilege,” permitting the collective-work 
author to reproduce and distribute individual contributions 
as part of “a specific edition or issue of a periodical.” (10a). 
The second clause then “expands” on the privilege by per- 
mitting “the reproduction and distribution of the individual 
contribution as part of a ‘revision’ of ‘that collective work,’ 

i.e., a revision of a particular edition of a specific periodical.” 
(10a). Finally, the third clause sets an outer limit, permitting 
“the reproduction and distribution of the individual contribu- 
tion as part of a ‘later collective work in the same series,’ ” 
(10a) — which, as petitioners have acknowledged, means 
simply “a later issue of its magazine.” Pet.Bf. 26. 

Giving the three-part privilege its “most natural reading,” 
the Court found that the middle clause was intended to pro- 
tect “later editions of a particular issue of a periodical, such 
as the final edition of a newspaper.” (10a-11a). Surveying the 
features and character of the databases at issue, the Court 
concluded that none of them could be said to constitute a re- 
vised version of an edition of a specific periodical. (14a-17a). 

The Court below further noted that in addition to repro- 
ducing and distributing respondents’ articles as discrete works, 
petitioners had made them part of “new anthologies” — the 
databases themselves. These databases were created by col- 
lecting and assembling innumerable articles and other pieces 
of text from myriad different sources. J.A. 216a-328a, 331a. 
The resulting compilations owed their origin to the database 
producers, and thus were not in the same “series” as the print 
publishers’ collective works. (17a). 

9 

Having concluded that whether respondents’ articles were 
being offered as individual articles or as part of new antho- 
logies, petitioners had infringed respondents’ copyrights, the 
Second Circuit reversed and remanded with instructions to 
enter judgment for respondents on liability. (2a, 22a) In re- 
sponse to petitioners’ motion for rehearing and/or rehearing 
en banc, on February 25, 2000, the Court of Appeals issued an 
amended opinion clarifying its ruling in two respects7 and 
otherwise reiterating its findings and conclusions. On April 6, 
2000, the entire Second Circuit denied petitioners’ motion for 
rehearing en banc, without dissent. 

The Issues Before This Court 

Petitioners’ petition for certiorari claimed that the decision 
below would have disastrous consequences, and was in con- 
flict with two of this Court’s seminal copyright decisions, Feist 
Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) 
and Sony Corp. of America v. Universal City Studios, 464 U.S. 
417 (1984). The question petitioners presented for review was: 

[W]hether a publisher’s reproduction and distribution of 
its entire periodical not only in print, but also electron- 
ically, is privileged under the Copyright Act or instead 
infringes upon the copyrights held by contributing free- 
lance authors. 

Cert.Pet. at i (emphasis added). In their brief on the merits in 
this Court, petitioners restated their question presented as fol- 
lows: 

Are reproduction and distribution of a periodical in elec- 
tronic form, as well as in print, privileged under Section 
201(c) of the Copyright Act or does electronically pub- 

7 The Court made clear in its Amended Opinion that the § 201(c) privi- 
lege is both “non-assignable” and “non-exclusive,” and that it constitutes 
a default rule. In other words, that it applies “in the absence” of an ex- 
press agreement between a publisher and a writer and not, as petitioners 
claim, in the absence of an agreement to the contrary. (8a; 20a-21a). But 
cf. Pet.Bf. 11 n.9. Authors retain any rights that they do not expressly 
give away; they do not have to reserve any rights under a contract. 17 
U.S.C. § 201(a), (c). 

10 

lishing the same contents infringe upon the copyrights 
held by contributing freelance authors? 

Pet.Bf. at i (emphasis added). 

SUMMARY OF ARGUMENT 

I. The Copyright Act of 1976 makes a clear distinction 
between copyright in a contribution to a collective work and 
copyright in the collective work per se. 17 U.S.C. § 201(c). 
The collective work author’s copyright “extends only to the 
material contributed by the author of such work.” 17 U.S.C. 
103(b). It does not extend to “the preexisting material em- 
ployed in the work” or “imply any exclusive right in the pre- 
existing material.” Id. This means both that: (1) the freelancer’s 
copyright is not abrogated by its inclusion in a collective work, 
see Stewart v. Abend, 495 U.S. 207, 223, 231, 235 (1990),8 
and (2) the collective work author is necessarily in the posi- 
tion of a prospective “licensee” with respect to the freelance 
material. If the publisher wishes to print, reproduce and dis- 
tribute its collective works — with a freelance contribution 
included — then it must either expressly obtain rights in the 
contribution from the freelancer or an exemption from lia- 
bility. Otherwise, its publication will be infringing. 17 U.S.C. 
§ 501. 

Section 201(c) of the Act establishes a default rule that ap- 
plies in the absence of an express license or assignment. 17 
U.S.C. § 201(c). By affording the newspaper and magazine 
publisher the “privilege” of reproducing and distributing a 
contribution “as part of ” its collective works, the section af- 
fords the publisher the mechanical license it needs to print 
and distribute its periodical. As long as it acts within the limits 
of the privilege, the privilege also effectively affords the pub- 
lisher a personal exemption from liability. 

The question with which the Court is presented, therefore, 
is whether petitioners in this case acted within the limits of 
that privilege or, alternatively, whether they violated respon- 

8 Abend, supra, was decided in the context of derivative works rather than 
compilations. However, under § 103(b), the same principles would apply. 

11 

dent freelancers’ rights when they took freelance articles that 
had once been part of a collective work and placed them into 
one or another of three specific databases. While there are 
differences between the three databases, for purposes of this 
case, those differences are not material. See discussion, post, 
at 34-35. 

To determine whether or not petitioners acted within the 
privilege, the Second Circuit began by looking at the precise 
language of § 201(c). It provides that “the owner of copyright 
in the collective work [i.e., an issue of a newspaper] is pre- 
sumed to have acquired only the privilege of reproducing and 
distributing the contribution as part of [1] that particular col- 
lective work, [2] any revision of that collective work, and 
[3] any later collective work in the same series.” 17 U.S.C. 
§ 201(c). The parties are agreed as to the meaning of Clauses 
1 and 3. In the context of Newsday and The New York Times, 
they agree that (1) Clause 1 refers to the first edition of a 
newspaper in which an article is printed, and (2) Clause 3, to 
a subsequent day’s issue of the same newspaper. 

As petitioners must concede that the databases at issue here 
are neither the “particular collective work” in which the contri- 
butions first appeared, nor “a later collective work in the same 
series,” they labor to convince the Court either: (1) that the 
databases of which the contributions now form “a part” con- 
stitute a “revision” of each of the print publishers’ collective 
works in which a contribution originally appeared, or (2) that 
the databases contain such revisions. 

II. The databases do not contain revised editions of the 
print publisher’s collective works: Although petitioners repeat 
the assertion over and over again that they have placed “elec- 
tronic copies” or “versions” of the print publishers’ collective 
works on-line, the facts establish the opposite and both Courts 
below so found. (4a, 5a, 14a-17a, 29a). The facts establish 
that, rather than send NEXIS either original or revised editions 
of intact collective works, the print publishers sent Mead sep- 
arate electronic envelopes, each of which contained a single 
article. LEXIS/NEXIS then placed these individual articles 
on-line and made them individually retrievable. 

12 

Liability is established on the basis of these facts alone. 

This is necessarily so because it is clear, under these cir- 
cumstances, that there are no “copies” of the print publisher’s 
collective works fixed in the databases. See Matthew Bender 
& Co. v. West Publishing, 158 F.3d 693, 702-703 (2d Cir. 
1998), cert. den’d, 526 U.S. 1154 (1999). The only works fixed 
in the database are individual articles. Id. Those that are free- 
lance articles owe their “origin” to their freelance authors. 
17 U.S.C. § 201(c). It is the freelance author’s copyright, 
therefore, and not the collective work author’s copyright that 
subsists in them. See 17 U.S.C. § 102 (“copyright protection 
subsists, in accordance with this title, in original works of 
authorship fixed in any tangible medium of expression . . .”). 
See also Feist Publications, Inc. v. Rural Telephone Service 
Co., 499 U.S. 340, 355 (1991). 

Not only does § 201(c) not authorize extending the collec- 
tive work author’s copyright to these articles on the basis that 
they had once been part of a collective work, but § 103(b) on 
its face absolutely forbids such an extension. See 17 U.S.C. 
§ 103(b) (“[t]he copyright in a compilation . . . 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 pre- 
existing material”). 

III. The databases do not constitute revised editions of the 
print publisher’s collective works: While the parties are not 
agreed as to the meaning of the language in Clause 2 of the 
privilege (“any revision of that collective work”), they none- 
theless agree on certain criteria that must be applied in deter- 
mining its meaning. Most significantly, perhaps, they agree 
that for a work to come within Clause 2, it must be recogniz- 
able as a version of the Clause 1 work. Pet.Bf. 9. They further 
agree that, as far as newspapers are concerned, Clause 1 refers 
to the first edition of a particular newspaper in which a con- 
tribution appears on a given day. 

The question then becomes: what resembles that first edi- 
tion, but is not a subsequent day’s issue of the newspaper? The 

13 

answer the Second Circuit supplied was required by a natural 
reading of the statute: other editions of the same day’s news- 
paper. (10a-11a). Contrary to petitioners’ suggestion, there is 
nothing outlandish about the Second Circuit’s reading of the 
plain meaning of § 201(c) or the fact that the Court paid 
attention to all three of its clauses. Not only is its conclusion 
that the databases at issue here do not resemble morning edi- 
tions of millions of different periodicals consistent with the 
only logical reading of § 201(c), it is also consistent with the 
Act as a whole, its Constitutional mandate and legislative pur- 
pose, and any accurate reading of the legislative history. 

It is petitioners’ suggestion that NEXIS does resemble the 
May 3 

rd, 1993 morning edition of Newsday that is outlandish. 
And, that it also and simultaneously resembles all other indi- 
vidual periodical issues that were the original source of its 

2.8 billion articles. Indeed, unless the concept of recogniza- 
bility is itself to be deprived of all meaning, none of these 
gargantuan, amorphous and ever-changing databases can be 
equated with an evening edition of a newspaper. 

Petitioners themselves would appear to have reversed their 
position on this question for, in the past, they eschewed the 
position that databases constitute “revisions.” They do not 
constitute revisions, they said; they only contain them. See 
Appellees’ Brief at 60 and 60 n.49. See also footnote 5, ante. 

In fact, as the Second Circuit recognized, they do neither. 

IV. Petitioners’ affirmative defenses: Petitioners’ defenses 
rely upon the same mischaracterization of facts as their legal 
theories. First, neither respondents nor the Court below rely 
upon the conduct of end-users; it is, and always has been 
irrelevant. Sony Corp. of America v. Universal City Studios, 
Inc., 464 U.S. 417 (1984). Petitioners describe what can be 
generated and displayed by end-users performing certain 
searches only because this is tangible evidence of what res- 
pondents put into their databases. By the same token, conduct 
by end-users such as historians and researchers can no more 

14 

save petitioners from liability (as some amici suggest it should) 
than it can condemn them. 

Nor can blame be placed on the electronic medium. Peti- 
tioners attempt to do this by suggesting that if they are allowed 
to use electronic media at all, then they must be allowed to do 
whatever their format of choice requires of them. (Cert.Pet. 
26-27, Pet.Bf. 4, 12, 18, 40, 43). This assertion has no support 
in either the facts or logic. Petitioners confuse media with 
formats. There is no evidence to support the conclusion that 
the desire to use the electronic medium compelled their choice 
of a particular format or that they were required to dis- 
assemble their collective works in order to make use of the 
electronic medium. In fact, the evidence is to the contrary. 
Digital formats that do not require the deconstruction of col- 
lective works were clearly available to them. 

In any event, petitioners misconstrue the principle of med- 
ium neutrality, which merely means that copyright protection 
continues to attach to a work regardless of the medium in 
which it is first created or thereafter properly reproduced. It 
does not mean that a person who acquires a privilege to use a 
work necessarily acquires the right to reproduce and distri- 
bute it in any and all media or formats. 

Petitioners also argue that even though they may have 
placed individual articles into the databases, an inchoate copy 
of the original collective work somehow resides therein, albeit 
dispersed throughout the database. Even assuming arguendo 
a factual predicate, this argument flies in the face of the prin- 
ciple that copyright protection extends to the “expression” or 
embodiment of a collective work, and not its mere concept. 
Without “embodiment”, there can be no “copy” or “revision” 
of the collective work, and thus, no § 201(c) privilege. See 
generally, Matthew Bender, supra. 

The “aggregate uses” defense is an inversion of petitioners’ 
“inchoate copy” theme. It posits that so long as all (or most of) 
the other articles originally published in the same collective 
work can also be individually retrieved, the database quali- 
fies for protection under § 201(c). Such a reading of the sec- 

15 

tion would extend copyright protection to preexisting works 
and thus conflict with § 103(b) of the Act, and interpret the 
words “as part of ” a collective work in § 201(c) to mean 
“transmitted or reproduced at about the same time as other 
components of ” such a work. 

Finally, petitioners argue that if the Court does not read the 
statute to mean what it wants, they will be forced, in effect, 
to inflict grave damage on the “national archives,” now stored 
in their electronic products. Affirmance would, they insist, 
require the deletion of all illegally reproduced works, creating 
a hole in the historic record. Affirmance would not affect the 
historic record. Notwithstanding petitioners’ threat of self- 
inflicted wounds, the issue of remedies has yet to be ad- 
dressed, and the statute must be construed not to achieve or 
avoid certain results, but in accordance with established norms 
and principles. 

V. Issues The Second Circuit Did Not Reach: There were 
essentially three issues before the Second Circuit with respect 
to § 201(c): (1) its scope, (2) its transferability; and (3) whether 
it could properly be exercised in the electronic medium. Al- 
though the Second Circuit did not address either of the latter 
two issues, they also support the judgment in respondents’ 
favor. We address both of these issues, post. 

We begin with the transferability issue since the statutory 
provisions and legislative history that relate to that issue also 
relate to the privilege’s scope. 

ARGUMENT 

I. The Statute And Its Plain Meaning: 

A. The Section 201(c) Privilege Is Non-Assignable, 

Non-Transferable And Non-Exclusive. 

1. A “Privilege” Is Not A “Subdivision Of An 
Exclusive Right.” 

The District Court held that the privilege provided in § 201 
(c) of the Act is transferable under § 201(d)(2) without the 
consent of the author of an affected contribution. The court 
reasoned that § 201(d)(2) provided for the transfer of “[a]ny 

16 

of the exclusive rights comprised in a copyright, including 
any subdivision of . . . [such] rights”, and the § 201(c) privi- 
lege constituted such a “subdivision.” (47a-49a). The Second 
Circuit concluded that it did not have to reach this issue. (7a) 
The District Court’s view is mistaken. 

Article I, Section 8, Clause 8 of the Constitution grants 
Congress the power “[t]o promote the Progress of Science 
and useful Arts, by securing for limited Times to Authors and 
Inventors the exclusive Right to their respective Writings and 
Discoveries.” (Emphasis added). 

Consistent with this mandate, Congress has made a clear 
distinction between copyright in a collective work or com- 
pilation and copyright in the underlying contributions. 17 
U.S.C. § 201(c). The copyright in the compilation “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 pre- 
existing material.” 17 U.S.C. §103(b). Thus, after publication 
in a newspaper or magazine, a freelancer continues to have 
exclusive rights in his contribution as well as the power 
to transfer all or any portion of those rights. 17 U.S.C. 
§§ 103(b), 201(d)(2). See also Stewart v. Abend, 495 U.S. 
207, 216, 223, 231, 235 (1990); Russell v. Price, 612 F.2d 
1123, 1128 (9th Cir. 1979), cert. den’d, 446 U.S. 952 (1980). 

Section 201(d)(2) provides that “[a]ny of the exclusive 
rights comprised in a copyright, including any subdivision of 

. . . [such] rights” may be “transferred and owned separ- 
ately.” Section 101, in turn, defines such a “transfer of copy- 
right ownership” as including “any . . . conveyance . . . of . . . 
exclusive rights. . . , whether or not it is limited in time or 
place of effect.” It is thus clear that what Congress was 
referring to in § 201(d)(2) when it referred to a “subdivision” 
of an exclusive right was such types of limitations — “in time 
or place of effect.” 

17 

2. The Privilege Represents A Personal Exemp- 
tion From Liability And Not A Transferable 
Ownership Interest In Property. 

Contrary to the suggestion of certain amici, language in both 
the statute and the Constitution make it clear that the privi- 
lege provided for in § 201(c) is a personal exemption from 
liability and not a transferable property interest. 

First, while Congress uses the words “rights,” “exclusive 
rights,” and “copyright” almost everywhere else in the Act, in 
§ 201(c), it uses the word “privilege.” That word has histori- 
cally referred to a strictly personal prerogative, not a trans- 
ferable property right. Webster’s Third New International 
Dictionary 1805 (1976). See 8 Wigmore, Evidence, Section 
2196, p. 111 (1961) (“. . . [a] claim of privilege can be made 
solely by the person whose privilege it is. The privilege . . . is 
purely personal.”) See also, e.g., United States v. White, 322 
U.S. 694, 698-99 (1944); Picard v. East T., V. & G.R. Co., 
130 U.S. 637, 642 (1889); Chesapeake & O.R. Co. v. Miller, 
114 U.S. 176, 185 (1885) (“rights . . . may be conveyed”; 
“privileges” are “personal and incapable of transfer without 
express statutory direction”). 

Second, in the few other instances in the Act where Con- 
gress has provided for a “privilege” rather than a “right,” it is 
clear that what has been provided is an exemption from 
liability. Thus, sections 109(a) and 109(c) of the Act afford 
a person who acquires ownership of a “material object” — 
as opposed to a “work”9 — the “privilege” of displaying the 
object (§ 109(c)), and of selling or otherwise disposing of it 
(§ 109(a)), notwithstanding that he or she has no copyright 
rights in the embodied work. Sections 109(a) and (c) permit 
someone who acquires a material object, but not the copy- 
right in the underlying work, to do something that would 

9 See 17 U.S.C. § 202 (“Ownership of a copyright, or of any of the 
exclusive rights under a copyright, is distinct from ownership of any 
material object in which the work is embodied. Transfer of ownership of 

. . . [the] material object . . . does not of itself convey any rights in the 
copyrighted work embodied in the object.”) 

18 

otherwise constitute copyright infringement without incurring 
any liability. They permit the person to sell or display the 
object without violating §§ 106(3) and 106(5). 

Congress’ use of the word “privilege” in § 201(c) is con- 
sistent with its use in these provisions. It permits a publisher 
to reproduce and distribute publications in a particular series 
without incurring liability under the Act. See Black’s Law 
Dictionary 1359 (Rev. 4th ed. 1968) (defining the term “privi- 
lege” inter alia as “[t]hat which releases one from the per- 
formance of a duty or obligation . . . or exempts one from a 
liability. . .”). 

Third, the District Court reasoned that the privilege was 
transferable on the ground that the § 201(c) privilege con- 
stituted a species (or sub-species) of any “exclusive right.” 
(47a-49a). That conclusion cannot be reconciled with the lan- 
guage of §103(b): “[t]he copyright in a compilation . . . does 
not imply any exclusive right in the . . . [underlying contri- 
butions].” 

Hence the most that a newspaper or magazine publisher 
can be said to obtain under the § 201(c) privilege is a non- 
exclusive license. 

10 The recipient of a non-exclusive license 
receives only a “mere waiver of the right to sue.” He or she 
does not secure an ownership interest in property. See, e.g., 
General Talking Pictures Corp. v. Western Elec. Co., 304 
U.S. 175, 181 (1938), adhered to, 305 U.S. 124, reh’g denied, 
305 U.S. 675 (1939)(a nonexclusive license “amount[s] to no 
more than a mere waiver of the right to sue.”) And, because 
he does not secure an ownership interest in property, his “li- 
cense” is not transferable to a third-party. 17 U.S.C. § 101 
(the term “transfer of copyright ownership” is defined as ex- 
cluding “a nonexclusive license”). See also 3 Nimmer § 10.02 
[B][4]; Harris v. Emus Records Corp., 734 F.2d 1329, 1333 

10 See generally, Abend, 495 U.S. 207, 223, 231, 235 (1990) (majority 
opinion). See also 495 U.S. at 242, 248 (dissent). 

19 

(2d Cir. 1984); Ilyin v. Avon Publications, Inc., 144 F.Supp. 
368 (SDNY 1956). 

11 

Fourth, any construction of § 201(c) that gives a publisher 
more than a mere waiver of the right to sue or nonexclusive 
license would run afoul of the constitutional mandate. Why? 
Because the constitutional grant of power was a limited one. 
Congress was granted the power to “secur[e] to Authors and 
Inventors the exclusive Right to their respective Writings.” 
(emphasis added). Any statute that purported to confer an ex- 
clusive right on a person other than the author, without the 
author’s consent, would exceed the constitutional grant. 

In any event, petitioners have as much as conceded that the 
statutory license conferred on them is a nonexclusive one: 

THE COURT: 
. . . Do you concede that an author 

who gives an article to a newspaper like the New York 
Times . . . retains the right to take that article and have it 
published in a different methodology if he cho[oses] to. 

MR. KELLER: In fact, Your Honor, there is testi- 
mony in the record that every single one of the respon- 
dents did that. 

THE COURT: 
They retained that right? 

MR. KELLER: Absolutely. 

THE COURT: 
Could they, if they chose, sell their 

individual article to NEXIS? 

MR. KELLER: 
Yes, they could. 

J.A. 338a-339a. The Second Circuit agreed with that assess- 
ment. On February 25, 2000, it amended its opinion in this 

11 Nonexclusive patent licenses are, similarly, non-transferable as a matter 
of law. See, generally, Jim Arnold Corp. v. Hydrotech Systems, Inc., 109 
F.3d 1567, 1577 (Fed. Cir. 1997); Gilson v. Republic of Ireland, 787 F.2d 
655, 658 (D.C. Cir. 1986); PPG Industries Inc. v. Guardian Industries 
Corp., 597 F.2d 1090, 1093 (6 

th Cir. 1979); Franz Chem. Corp. v. Phila- 
delphia Quartz Co., 594 F.2d 146, 148 (5 

th Cir. 1979); Unarco Industries, 
Inc. v. Kelley Co., 465 F.2d 1303, 1306 (7 

th Cir. 1972), cert. den’d, 410 

U.S. 929 (1973). 

20 

matter to hold that the privilege provided for by § 201(c) is 
both “non-assignable” and “non-exclusive.” (8a). 

B. The Scope Of The Privilege: Publishers Are Given 

A Privilege To Include A Contribution 
In A Particular “Series.” 

As the Second Circuit recognized, the scope of the privilege 
provided by § 201(c) depends on the statute’s language. (9a). 
The language is plain. A newspaper or magazine that includes 
a freelance contribution with permission, but without an ex- 
press transfer of rights, is given the “privilege” of repro- 
ducing and distributing that 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.” 

Three things are immediately apparent. First, the three 
clauses whose construction is at issue describe a single privi- 
lege, with each clause constituting a branch of the privilege. 
Second, under this privilege, a contribution can be repro- 
duced and distributed only as part of a work described by one 
or another of these three branches. And, third, the works en- 
compassed by the second and third branches are defined in 
terms of, and relation to, the works covered by the preceding 
clauses. 

Thus, the first clause provides for a contribution to be re- 
produced and distributed as part of “that particular collective 
work,” which the parties agree means the “magazine, news- 
paper or encyclopedia edition in which the article is first 
published.” Pet.Bf. 26. The second branch provides for repro- 
duction and distribution as part of any revision “of that 
collective work.” And, the third branch provides for repro- 
duction and distribution as part of a later collective work “in 
the same series” as the preceding two branches. 

This is far from a statute in which the terms stand entirely 
“on their own,” with “no indication that Congress intended 
th[e] terms to limit each others’ scope,” as petitioners claim. 
Pet.Bf. 16. Both the language and the structure of the Act 
make it clear that the terms of one clause define the scope of 
the others. The principle of noscitur a sociis therefore applies. 

21 

See, e.g, Gutierrez v. Bordallo, 528 U.S. 250, 255 (2000) (the 
Court utilized noscitur a sociis to interpret the words “any 
election,” noting that the principle “is often wisely applied 
where a word is capable of many meanings in order to avoid 
the giving of unintended breadth to the Acts of Congress”); 
United States v. Ryan, 284 U.S. 167, 175-76 (1931) (the Court 
utilized it to narrow the seemingly all-encompassing phrase 
“all personal property whatsoever”). See also Stephen Breyer, 
“On The Uses Of Legislative History In Interpreting Statutes,” 
65 S.Cal.Law Rev. 845, reprinted in 3 Singer, Sutherland Stat. 
Const. at 376 (5th ed. 1993) (“the word ‘any’ in a statute rarely 
means ‘any at all in the universe’ ” and “almost always has 
some context-implied limitation”). 

Petitioners’ second objection to the way the Second Cir- 
cuit interpreted § 201(c) is equally untenable. Pet.Bf. 16, 25. 
It was perfectly proper for the Second Circuit to consider the 
structure of the statute in ascertaining its meaning. See, e.g., 
United States National Bank of Oregon v. Independent Insur- 
ance Agents of America, Inc., 508 U.S. 439, 455 (1993) (“Sta- 
tutory construction . . . must account for a statute’s full text, 
language as well as punctuation, structure, and subject mat- 
ter.”); Community for Creative Non-Violence v. Reid, 490 
U.S. 730, 748 n.14 (1989); Rodriguez v. Compass Shipping 
Co., 451 U.S. 596, 617 (1981). The Court’s determination that 
the first and third clauses established lower and outer limits 
for the privilege, and that the second clause occupied the 
middle ground (10a) would seem compelled by plain logic as 
well as plain meaning. 

Indeed, petitioners have as much as conceded that the sta- 
tute must be read in this way. 

How? In assuming the following four different positions. 

First, they agree that under § 201(c), a contribution can only 
be included in the collective works of one “series” 

12 — the 

12 The parties agree that the word “series” refers to a particular periodical 
or publication. Pet.Bf. 26; NGS Amicus 13 (“The word ‘series’ . . . en- 
compasses ‘a number of successive parts or volumes of a periodical pub- 
lication.” Webster’s Third New Int’l Dictionary 2073 (1976).) 

22 

periodical in which it was initially published. Pet.Bf. 11. 

13 

Thus, it cannot be published first in an issue of The New York 
Times and subsequently in an issue of The Boston Globe. 
(63a, 77a). Accord, Pet.Bf. 11; OA at 6-7. This is so even if 
the two periodicals — as is true with the Times and the Globe 
— are published by the same publisher. This limitation de- 
rives from the plain language of the privilege. 

14 

Second, they have acknowledged that for a work to con- 
stitute a “revision of that collective work,” within the meaning 
of the privilege’s second branch, the revision must not only 
represent a “new, amended, improved or up-to-date version” 
of the work referred to in the first clause (i.e., “that collective 
work”), it must be recognizable as a version of it. Petitioners 
thus have acknowledged that the sine qua non of revision is 
recognizability as a “version” of the original work. 

15 

Third, they acknowledge that “recognizability” requires 
a discrepancy of no more than 50% between the contents of 
the original and revised works. Pet.Bf. 30, 40. The NEXIS 
database is not a “version” of every daily edition of every 
newspaper some of whose contents it contains. Each such 
newspaper represents not 50%, but an infinitesimal fraction, 
of what is in NEXIS. 

The term “collective work” refers to a particular issue or edition of such 
a publication. 

13 See also Pet.Bf. 31 n. 20, where petitioners admit that, as drafted, the 
first two clauses of § 201(c) were intended to pertain to the “publication 

. . . [of] a particular issue of a particular periodical.” (emphasis added). 
They contend that the third clause was added to cover republication in a 
later issue of the same periodical. Id. 

14 Read naturally, the third clause provides for including contributions in 
later collective works “in the same series” as the collective works in the 
first and second branches. It necessarily follows, therefore, that all three 
branches refer to works “in the same series.” 

15 See, e.g., Pet.Bf. 9, wherein petitioners concur in the District Court’s ob- 
servation that a revision “must be recognizable as a version of a preexisting 
collective work if it is to be fairly characterized a revision of ‘that col- 
lective work.’ ” (61a). 

23 

Fourth, and finally, they have acknowledged that for a 
work to come within the third clause, it need merely be “a 
later issue” of the same newspaper or periodical. Pet.Bf. 26. 

Together, petitioners’ concessions spell out a simple cal- 
culus. In that calculus: 

CW1 (or the collective work referred to in clause 1) is 
the first edition in a particular periodical, magazine or 
newspaper series in which a contribution is published. 
Pet.Bf. 26. As such, it defines the “series” (or particular 
publication) to which reproduction of the contribution is 
thereafter limited under § 201(c). It also establishes the 
baseline against which a Clause 2 work is measured for 
recognizability. 

In order to qualify as a Clause 2 work or CW2, a work 
must be in the same series as the Clause 1 work, be re- 
cognizable as a version of it and differ from the Clause 
1 work in no more than half of its contents. 

In order to qualify as a Clause 3 work or CW3, a work 
need not meet as many criteria. It need only be in the 
same series as the clause 1 work and share one contri- 
bution in common with it — the contribution in question. 

Whether one views this calculus from the standpoint of 
simple linguistic common sense or basic Cartesian logic, it is 
indisputable that Clause 1 represents the statutory baseline 
for the privilege, Clause 3 sets the outer limit, and Clause 2 
occupies the middle ground. 

This does not, however, resolve the issues raised. Having 
read the language of the section in light of its structure and 
context, these must be applied to concrete facts. The Second 
Circuit did this — simply, straightforwardly and elegantly — 
by asking, essentially, the following question: What is it that 
is published in the same “series” as CW1, is a commonly re- 
cognized version of it, and yet is not a “later” collective work 
in the same series? 

As the Second Circuit found, the answer is obvious: later 
editions of the issue in which a contribution first appears. 

24 

(Since it is stipulated that CW1 is the first edition in which 
a contribution appears on a particular day, any other editions 
of that day’s paper to include the contribution will be “later 
editions” by definition. They are not “later collective works,” 
however, because a later collective work is a different issue). 

The same conclusion must be reached, even without con- 
sidering the section’s structure, merely construing § 201(c)’s 
language in light of what the NGS brief suggests is Con- 
gress’ predilection for “avoid[ing] any gaps in coverage.” 
NGS Amicus 5 (emphasis in original). All three clauses refer 
to collective works in the same series and the meaning of the 
first and third clauses is plain. The gap can therefore be quan- 
tified. 

The first clause (“that particular collective work”) refers to 
the particular edition of the magazine or newspaper in which 
an article first appears. Accord, Pet.Bf. 26. The third clause 
(“later collective work in the same series”) refers to a later 
issue of the same magazine or newspaper. Id., citing H.R. 
Rep. No 1476 at 122, J.A. 706a. What is left, then, to be cov- 
ered by the second clause are other editions of the original 
day’s issue. 

This reading leaves substantial scope for the second Clause 
of § 201(c). As the Second Circuit recognized, because the 
Clause’s “later editions are not identical to earlier editions, 
use of the individual contributions in the later editions might 
not be protected under the preceding clause.” (10a-11a). Thus, 
“[g]iven the context provided by the surrounding clauses,” 
interpreting the phrase “any revisions of that collective work” 
to mean later editions of a particular issue of a periodical 
“makes perfect sense.” (11a). “It protects the use of an indivi- 
dual contribution in a collective work that is somewhat altered 
from the original in which the copyrighted article was first 
published, but that is not in any ordinary sense of language a 
‘later’ work in the ‘same series.’ ”(id.). 

This definition covers a considerable number of works 
every day that would not otherwise have been permitted, ab- 
sent an express transfer. Pet.Bf. 43; Database Producers’ 

25 

Amicus 16-17. For example, in the case of both Newsday and 
The New York Times, the second Clause permits reproduction 
of respondents’ works in a dozen different daily editions. 
M002019, J.A. 215a. Each of these editions is “different” in 
some way. Database Producers’ Amicus 16-17. And, accor- 
ding to petitioners, the differences can be significant. See, e.g., 
Pet.Bf. 46 n. 32) (“[t]he ‘final edition of a newspaper’ often 
alters the ‘arrangement’ of the earlier editions in significant 
ways . . . “). 

Even if petitioners exaggerate the difference, each edition 
is clearly a different “work” within the meaning of the Act. 
See 17 U.S.C. §101 (“where . . . [a] work has been prepared 
in different versions, each version constitutes a separate 
work”). This necessarily means that only one of these edi- 
tions (or “works”) will constitute “that particular collective 
work” for purposes of the first Clause of the privilege and 
that they cannot all be brought within the rubric of Clause 1. 
It further means that each of these editions is separately 
copyrightable and separately registrable. 

Petitioners themselves effectively acknowledge this in their 
registrations. Thus, the New York Times seeks to include dif- 
ferent editions under the cover of one application. E.g., LVII 
160-175. Newsday Inc. files separate registrations for its dif- 
ferent editions or revisions. LVII 184-189 (showing, e.g. 
separate registrations for its Nassau, Suffolk and City edi- 
tions). Without Clause 2 as construed by the Second Circuit, 
each of these publishers would be able to include a contri- 
bution in only one of their dozen editions — i.e., in only 

8.3% of their daily output. 

C. The Scope Of The Privilege: Publishers Are Not 

Given The Privilege Of Public “Display” 

On its face, § 201(c) affords publishers the privilege of “re- 
producing” and “distributing” contributions as part of their 
collective works. 17 U.S.C. § 201(c). It does not give them the 
privilege of publicly “displaying” them. This omission is sig- 
nificant since the “right of public exhibition” — which be- 
came the § 106(5) “display” right — was created, in large part, 

26 

in order to accommodate electronic storage and retrieval sys- 
tems. See 17 U.S.C. § 101 (definition of phrase “to perform or 
display a work ‘publicly’ ”); § 106(5). See also Appendix I. 

II. The Legislative History Confirms The Plain Meaning 
Of The Provision. 

While respondents rely on the factual determinations of the 
lower courts and a natural reading of the statute, we briefly 
discuss the legislative history of § 201(c) to show that it fully 
supports the plain meaning of that statute. 

A. The History Of Section 201(c) Confirms That 

The Privilege Is Not Transferable. 

It is clear from the rejection of an earlier version of the sec- 
tion that § 201(c) confers a party-specific privilege, and not, 
as publisher petitioners must convince this Court, a “right” 
that they may sell or otherwise transfer. The careful distinc- 
tion in § 201(c) between a “transfer” of rights, on the one 
hand, and a “privilege” to publish, on the other, emerged from 
a drafting process that focused on this very issue. 

An early draft of the 1976 Copyright Act provided that a 
publisher could include a contribution in the original collec- 
tive work to which the freelance author contributed it and 
“in a similar composite work.” 

16 One of the representatives 
of authors’ groups — Harriet Pilpel — complained that the 
language was objectionable because it would permit one print 
publisher (i.e., the publisher of the newspaper or journal that 
originally included the contribution) to license or sell it for 
inclusion in another publisher’s “similar composite work.” 
See Copyright Law Revision, Part 2 at p. 151-152, LVI 39- 

40. That would deprive freelancers of a right that they would 
otherwise have been able to exercise. A consortium of book 

16 The actual language of the Register’s original recommendation was 
somewhat more convoluted. It provided that publishers would continue to 
secure the copyright in individual contributions and “hold in trust for the 
[freelance] author all rights in the author’s contribution, except the right 
to publish it in a similar composite work and any other rights expressly 
assigned.” Copyright Law Revision, Part 1 (1961 Report), at p. 88, LVI 17. 

27 

publishers registered a similar complaint respecting their 
publications: 

[W]e would have no objection to the foregoing if the 
phrase “except the right to publish it in a similar com- 
posite work” had been worded so that as to composite 
works other than periodicals, the publisher may issue 
revised editions, but without the right of assignment to 
another publisher. In the case of a periodical, we be- 
lieve that the right of publication should be restricted to 
the particular issue. 

Statement of the Joint Copyright Committee of American 
Book Publishers Council, Inc. and American Textbook Pub- 
lishers Institute (emphasis added), Copyright Law Revision, 
Part 1 (1961 Report), at p. 230, LVI 19. 

In response to these objections, the Copyright Office with- 
drew the overly broad “similar composite work” proposal and 
substituted a much more narrowly drawn proposal. The new 
version of § 201(c) deleted the reference to “right[s]” and af- 
forded publishers only “the privilege” of publishing a con- 
tribution in “that particular collective work.” In a statement 
accompanying the transmittal of the preliminary draft bill 
in 1964, General Counsel for the Copyright Office confirmed 
that the provision had been redrafted so as to meet these ob- 
jections: 

In the course of our previous discussions of . . . [the 1961 
Report], strong arguments were made that there should 
not be a presumption of transfer of ownership, in the 
absence of an express transfer, of the right to publish 
the contribution in a similar collective work. We have 
adopted that argument . . 

Comments of Copyright Office General Counsel, Copyright 
Law Revision, Part 3, p. 258, LVI 77(emphasis added). 

Contemporaneous with its decision not to give publishers a 
presumed ownership interest in property that could be trans- 
ferred to a third party, the Copyright Office redrafted the pro- 
vision in such a fashion as to afford publishers a “privilege” 
instead of a “right.” 

28 

With this change, the 1964 bill — like the eventual act — 
afforded publishers “only” the “privilege” of publishing a con- 
tribution “in that particular collective work.” Although subse- 
quent changes permitted a publisher to include a contribution 
in more of its own works 

17 — i.e., in additional editions or 
issues of one of its own newspaper or magazine series — the 
Copyright Office never again sought to afford publishers a 
property interest that they could transfer to a third party. Thus, 
the subsequent changes never implicated or affected the dis- 
tinction established in the section between a “transfer” and a 
“privilege,” nor required reversion to use of the word “right” 
to describe what publishers were being given. 

Significantly, the phrase “transfer of ownership,” used by 
the General Counsel in his transmittal letter, was also assum- 
ing new dimensions in the 1964 draft proposal. Ultimately, 
its new meaning was embodied in the provisions that are now 
§§ 101 and 204. Specifically, § 204 was expanded so as to 
permit persons to record exclusive licenses and mortgages as 
“transfers of copyright ownership.” This, in turn, led directly 
to the definition of “transfer of copyright ownership” that 
appears in the current § 101. That provision defines a “trans- 
fer” as meaning 

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 copy- 
right, whether or not it is limited in time or place of ef- 
fect, but not including a nonexclusive license. 

17 U.S.C. § 101 (emphasis added). See also Copyright Law 
Revision, Part 3, 1964 Preliminary Draft, § 17 n. 13. Thus, the 
copyright revision process drew a clear and deliberate distinc- 
tion between interests that constituted transfers of copyright 
or exclusive rights under a copyright, and those that did not. 

17 This took place in two stages. The first stage involved permitting a 
publisher, in addition to including a contribution in “that particular col- 
lective work,” to include it in any revised editions it created. The second 
stage involved further permitting the publisher to include a contribution 
in a later issue of the same periodical. 

29 

It follows that if the second sentence of § 201(c) does not 
effect a “transfer of ownership” — as the General Counsel 
of the Copyright Office made clear it does not — then the 
privilege provided in that section: (1) cannot give a publisher 
exclusive rights or a subdivision of an exclusive right in a 
freelancer’s contribution; (2) cannot give a publisher a prop- 
erty interest that it can convey to a third party; and (3) gives 
a publisher only the equivalent of a non-exclusive license or 
waiver of the right to sue. 

Petitioners appear to have come to the same conclusion. See 
J.A. 338a-339a. So have their amici. See Publishers’ Amicus 
21 (wherein the publishers represent that they have “typically 
paid for what they and the authors understood to be non- 
exclusive licenses . . .”). 

B. The Legislative History Confirms That The 

Privilege Was Only Meant To Be Exercised 
Within The Same “Series.” 

The legislative history expressly confirms that the privi- 
lege of § 201(c) does not permit the publisher of a collective 
work containing a freelance contribution to “revise the con- 
tribution itself or include it in a new anthology or an entirely 
different magazine or other collective work.” H.R. Rep. No. 
1476 at 122-23, J.A. 706a. In other words, not only can a 
publisher not transfer its interest to a third party — for pub- 
lication in the third party’s works — it can only include a 
freelance contribution in one of its own series. The “series” 
to which the freelance contribution is limited is the “same” 
series in which it was originally published. Thus, it can 
be published in other editions and later issues of that same 
newspaper or periodical, but not a different periodical pub- 
lished by the same publisher. This is not a medium-specific 
limitation; the publisher could no more reprint the contri- 
bution in a book of articles on a particular theme or include it 
in a CD-ROM or NEXIS anthology. 

30 

C. Petitioners’ Claim That § 201(c) Was Intended 

To Accommodate Electronic Information Storage 
And Retrieval Systems Is Erroneous. 

Petitioners claim (at pages 34-37 of their brief) that Con- 
gress was aware of the existence and operation of electronic 
information storage and retrieval systems and that it fash- 
ioned the Act with such systems in mind. As a general propo- 
sition, that is true. It is not true, however, that § 201(c) was 
either drafted or intended to accommodate such systems. See 
LVI generally and Patry Report, LVI 299-343. 

The language of § 201(c) was finalized by February 4, 
1965. See LVI 300, ¶2. Congress did not begin seriously con- 
sidering the copyright implications of electronic information 
storage and retrieval systems until several months later. 

18 

And while Congress subsequently adopted the Register of 
Copyright’s May 1965 recommendation to provide for a “right 
of public exhibition” in § 106 of the Act, 

19 at no point be- 
tween the 1965 recommendation and 1976 enactment of the 
Act was the language of § 201(c) modified to permit pub- 
lishers to publicly “display” works as well as to “reproduc[e]” 
and “distribut[e]” them. This omission carries weight since 
the right of public “display” was, in large part, designed and 
created to cover computerized systems. LVI 206, H.R. Rep. 
No. 2237, 89 

th Cong., 2d Sess. (1966), pp. 55-56 (“The com- 
mittee is aware that in the future electronic images may take 
the place of printed copies in some situations, and has dealt 

18 See LVI 149, Copyright Law Revision: Hearings on H.R. 4347, 5680, 
6831, 6835 before Subcomm. No. 3 of House Comm. on Judiciary, 89 

th 

st Sess. (1965), pp. 33, 43-44, 57, 63, 73, 161, 168-169; 1074-1076, 
1147-1149, 1420-1461, 1467-1468, 1755-1769, 1861, 1898-1899; LVI 147, 
Copyright Law Revision: Hearings Before Subcomm. on Patents, Trade- 
marks and Copyrights of Senate Comm. on Judiciary, 89 

th Cong., 1 

st Sess. 

Cong., 1 

(1965) p. 220; LVI 206, H.R. Rep. No. 2237, 89 
th Cong., 2d Sess. (1966), 

p. 53; LVI 216, Copyright Law Revision: Hearings before Subcomm. on 
Patents, Trademarks, and Copyrights of Senate Comm. on Judiciary, 90 

th 

Cong., 1st Sess. (1967), pp. 66-73, 90-96, 573-577, 688-689, 731-735, 
1065-1067. 

19 This ultimately became the public “display” right. 17 U.S.C. § 106(5). 

31 

with the problem by amendments in sections 109 and 110, 

. . . without mixing the separate concepts of ‘reproduction’ 
and ‘display.’ ”). See also LVI 129, Supplementary Report of 
the Register of Copyrights on the General Revision of the 
U.S. Copyright Law; 1965 Revision Bill, 89 

th Cong., 1 

st Sess., 
Copyright Law Revision, Part 6, pp. xviii, 20-21; H.R. Rep. 
No. 83, 90 

th Cong., 1 

st Sess. (1967), pp. 26-27. 

Even in 1976, eleven years after the language in § 201(c) 
was finalized, Congress was still not sure how it wished to 
address the question of what it called “computer uses” — i.e., 
the practice of storing works in computer systems and mak- 
ing them available for retrieval. Rather than legislate with 
respect to the question, it established the National Com- 
mission on New Technological Uses of Copyrighted Works 
(“CONTU”) to consider that and one or two other computer- 
related issues and make copyright recommendations in the 
future. P.L. 93-573, 93rd Cong., 2d Sess. (1974), LVI 239- 
240. In the meantime, it adopted a stop-gap measure, § 117 
of the Act, to prevent sections of the Act that might otherwise 
have been read as authorizing the use of works in conjunction 
with storage and retrieval systems from having that effect. 

20 

Significantly, Congress did not include section 201(c) among 
those sections that it subjected to the moratorium. It only 
included sections 106 through 116 and 118 of the Act. 

There are two possible explanations: Either Congress in- 
tended to give periodical publishers a right that it was 
simultaneously denying everyone else — i.e., the right to use 
their works in conjunction with electronic information stor- 
age and retrieval systems — or there was no need to subject 
§ 201(c) to the § 117 moratorium since Congress did not be- 
lieve it could be read to authorize such use. The latter is the 
only rational explanation. 

20 The section provided that notwithstanding the seeming applicability of 
sections 106 through 116 and 118 of the Act, no person would have any 
“greater or lesser rights with respect to the use of the work in conjunction 
with automatic systems capable of storing, processing, retrieving, or trans- 
ferring information, or in conjunction with any similar device, machine, 
or process” than those rights the person held on December 31, 1977. 

32 

Even if petitioners were correct and collective work pub- 
lishers could exercise the § 201(c) privilege in any and all 
media, the most that this could mean is that a publisher could 
reproduce its own collective works in different media, not 
that it could deconstruct its works and reproduce their com- 
ponent parts. To construe § 201(c) as permitting the latter 
in the context of an electronic database would be to deprive 
respondents and their works of copyright protection in the 
electronic medium that they are entitled to in print — and, 
thereby, to violate the very principle of medium-neutrality that 
petitioners have pretended to champion. If petitioners cannot 
cut a contribution out of a printed newspaper and offer it as a 
flyer on the streets, then they cannot accomplish or effect the 
same result electronically. Similarly, if they cannot include a 
contribution in a new “print” anthology, or authorize anyone 
else to do so, then they cannot include it or authorize its in- 
clusion in a new electronic anthology either. As we will see 
in the next section, however, petitioners attempted to achieve 
both results. 

III. The Case Against Petitioners Is Indisputable: 

A. The Case Against Petitioners Is Clear 

On The Face Of The Statute 

As the Second Circuit correctly recognized, one doesn’t 
have to go beyond the four corners of the Copyright Act to 
determine the issues in this case. Liability is clear. 

1. The Case Against The Print Publishers 
Is Clear: 

As respondents amply demonstrated below, the print pub- 
lishers in this case reproduced and transmitted the textual 
components of their newspapers and magazines to Mead as 
individual works and not “as part” of one or another of their 
collective works. BA ¶¶ 10-19, J.A. 22a-80a. Both courts be- 
low so found. (4a, 5a, 29a). 

The publisher-petitioners respond to this argument by 
claiming that by transmitting all of a day’s individual article- 
files to NEXIS at more or less the same time, they are in fact 

33 

transmitting “issues.” Pet.Bf. 41-42; Cert.Pet. 22-23. Peti- 
tioners’ argument is mistaken. The Act is clear. There must 
be an embodiment of a collective work as a collective whole 
for there to be a copyrightable “issue.” 17 U.S.C. § 101 (under 
the definition of “collective work,” it is not enough that con- 
tributions be “assembled;” they must be “assembled into a col- 
lective whole”). Here, the only embodiments the databases 
contained were those of individual articles. 

By reproducing and distributing these articles other than “as 
part of ” collective works, petitioners acted outside the privi- 
lege. 

2. The Case Against The Database Producers 
Is Clear: 

The case against the database producers can be analyzed 
according to either of two models: the “copy-shop model” or 
the “new anthology model.” In each instance, liability is clear. 

Under the “copyshop model,” the database producer ex- 
ceeds the privilege of § 201(c) by reproducing and, in the case 
of UMI, distributing freelance contributions as individual or 
stand-alone works — i.e., not “as part of ” anything, as § 201 
(c) requires. Under the “new anthology model,” the database 
producer exceeds § 201(c) by reproducing and, in the case 
of UMI, distributing freelance contributions “as part of ” new 
anthologies or compilations that do not qualify as § 201(c) 
works. 

Respondents Garson and Robbins agree with General Starr 
that the reason the “new anthology model” applies in this case 
is because individual articles were not placed into a database 
as part of intact copies of collective works. Had a contri- 
bution appeared in a database solely by virtue of the fact that 
the entire undeconstructed collective work of which it was a 
part was fixed in the database, then an “all media-inclusive” 
§ 201(c) would not have been violated. 

34 

The Copy-Shop Model: The function that Mead and UMI 
or, indeed, many databases or database producers serve these 
days is not so very different from that served by Kinko’s or 
the Michigan Document Services Company. At the public’s 
request, they each copy discrete elements of previously pub- 
lished collective works and bring those discrete elements to- 
gether in new combinations. Just as their conduct constitutes 
copyright infringement, so does the conduct of the database 
producers. See generally, Princeton University Press v. Mich- 
igan Document Services, Inc., 99 F.3d 1381, 1384-85 (6th 
Cir. 1996); Basic Books, Inc. v. Kinko’s Graphics Corp., 758 
F.Supp. 1522 (S.D.N.Y. 1991). 

There is, however, a significant difference between the tra- 
ditional commercial copyshop and the three electronic data- 
bases at issue here. Generally, the copyshop takes an intact 
collective work and selects for copying discrete pages or se- 
lections only upon the request of a customer. The electronic 
databases here, on the other hand, don’t copy from still intact 
collective works because the articles, selections and pages they 
need for any new assemblage have already been supplied to 
them — and stored by them — as discrete “documents.” BA 
¶¶ 9-20, J.A. 72a-81a. Indeed, they have not only already been 
supplied with discrete documents, but the databases have al- 
ready logged each document into inventory, given it a unique 
retrieval number, and electronically tagged it with “keywords” 
and “term topic identifiers” so that it can be individually re- 
trieved. BA ¶¶ 20-27, J.A. 81a-83a. 

Moreover, once in the system, an individual article con- 
tinues to be reproduced every time NEXIS creates a new gen- 
eration of its database, BA ¶ 27, J.A. 83a, and every time UMI 
presses new or additional discs containing the article. It fol- 
lows that before an end-user ever shows up and requests a 
particular article, the database producer has already copied it 
innumerable times (and in the case of UMI, distributed it), as 
well as taken concrete steps to authorize others to retrieve, 
display, copy and distribute the work. 

35 

Although there are clearly differences between the three 
databases at issue in this case, those differences are not ma- 
terial. Thus, it doesn’t matter that the NYTO database carries 
articles from different issues and editions of one publication, 
while NEXIS and the GPO databases carry articles from dif- 
ferent publications. Similarly, it doesn’t matter that NEXIS 
and the NYTO databases make articles available in a text- 
only format, while the GPO database makes articles available 
in a page-view format. The salient feature of each of these 
databases — and the feature that is material for purposes of 
§ 201(c) — is that they contain fixed copies of individual ar- 
ticles or component parts, but not collective works as a whole. 

A database that contained entire issues of periodicals in- 
stead of individual articles would not violate a § 201(c) privi- 
lege that is properly exercisable in all media. That is the type 
of database that General Starr has taken pains to describe. 

21 

There is no such database in this litigation. 

The “New Anthology Model”: When the database produ- 
cers take the article-files they receive from the print publishers 
and incorporate them into their databases, they are making 
articles that at some point in the past were part of particular 
editions of a newspaper “part of ” new compilations or an- 
thologies: the petitioners’ databases. See A Report on Legal 
Protection for Databases, A Report Of The Register of Copy- 
rights, U.S. Copyright Office, August 1997, LVI 427-431 
(databases are compilations); Copyright Office Circular 65, 
Copyright Registration for Automated Databases (databases 

21 While the National Geographic Society may well believe that, in 1997, 
it created a database that is consistent with the § 201(c) privilege, there is 
concrete evidence that it just as strongly believed, prior to that time, that 
UMI’s CD-ROMs were not copyright-compliant. J.A. 336a. Moreover, 
there is evidence that other publishers — including UMI itself — joined 
it in that belief. J.A. 334a-335a. 

Two of the publisher petitioners in this case appear to recognize in- 
fringing behavior when they see it in others. See “Whither Napster?: The 
music business must find a way to charge for Internet swaps so creators 
can benefit,” Editorial in Newsday, A 30 (Feb. 14, 2001); “A Win for Intel- 
lectual Property,” Editorial in The New York Times, A 30 (Feb. 14, 2001). 

36 

are compilations). See also William S. Strong, Database Pro- 
tection After Feist v. Rural Telephone Co., 41 Journal of the 
Copyright Society 34 (1994) (databases are compilations); 
Marybeth Peters, The Copyright Office and Form C Re- 
quirements of Registration of Claims to Copyright, 17 U. of 
Dayton L. Rev. 737 (1992) (databases are compilations); John 
F. Hayden, Copyright Protection for Computer Databases 
After Feist, Harvard J. Law & Tech. 215 (1991). 

Since these databases do not constitute editions of Newsday 
or The New York Times — but rather a “new anthology” or 
compilation — the database producers have clearly violated 
respondents’ copyrights by incorporating respondents’ articles 
into them. See H.R.Rep. No. 1476 at 122-23, J.A. 706a (where 
it is noted that section 201(c) was not intended to authorize 
publishers to include a contribution in “a new anthology or 
an entirely different magazine or other collective work”). 

22 

Moreover, by providing the article-files containing respon- 
dents’ articles to the database producers for such inclusion, 
the print publishers have made themselves vicariously and 
contributorily liable for the database petitioners’ infringements. 

B. The Case Law Is In Complete Accord 

At page 7 of their petition for certiorari, petitioners charac- 
terized the Second Circuit’s Opinion in this case as being “re- 
markable for its fundamental inconsistency with governing 
precedent of this Court and decisions of other circuits” and 
“for its inclusion [in the Opinion] of only one citation to a 

22 Respondents demonstrated at the CD-ROM demonstration that all of 
the articles in one of UMI’s discs are contained in one file, known as the 
“lib.ful” file. (D 40, 48). Although there are no human-readable markers 
that would enable anyone looking at the organization of the disc to know 
what articles were originally associated with what issues, the articles can 
be reorganized on an “issue-by-issue basis” by an end-user, using the date- 
and-periodical search, if the “user wishes to access the information that 
way.” KL 7; D 41. Each article is a separately retrievable unit. 

A set of the discs that were used at the CD-ROM demonstration were 
marked as plaintiffs’ exhibits and deposited with the District Court. They 
appear as item 52 in the District Court record. 

37 

copyright law decision.” Cert.Pet. 7. Petitioners’ charge is re- 
markable for its lack of foundation. If petitioners want to find 
case law that supports the Second Circuit’s decision, they 
don’t have to go outside the four corners of their own petition 
to do so. They will find it in the cases they cited on pages 23 
and 24 of their petition. Those cases can be divided into two 
series. 

The first series of cases stands for the proposition that a 
person engages in copyright infringement if he copies items 
into a computer without authorization — or copies items from 
one computer, component, disc or drive of a computer or one 
type of memory into another. See DSC Communications Corp. 

v. Pulse Communications, 170 F.3d 1354 (Fed.Cir. 1999); 
Stenograph LLC v. Bossard Assocs., 144 F.3d 96, 100 (D.C. 
Cir. 1998); Urantia Found. v. Maaherra, 114 F.3d 955 (9th 
Cir. 1997); Triad Sys. Corp. v. Southeastern Express Co., 64 
F.3d 1330, 1333 & n.4 (9th Cir. 1995); MAI Sys. Corp. v. 
Peak Comp., 991 F.2d 511, 519 (9th Cir. 1993); Sega Enter- 
prises v. Accolade, No. 92-15655 1993, U.S.App. LEXIS 78, 
at * 18 (9th Cir. Jan. 6, 1993); Atari Games Corp. v. Nin- 
tendo, 975 F.2d 832, 842 (9th Cir. 1992). 

The second series of cases stands for the proposition that 
the copier does not have a defense to such infringement based 
on the conduct of a third party. In other words, the fact that 
a third party might make fair use of the material that has been 
unlawfully reproduced on a drive or a disc or use it in a 
non-infringing way does not give the copier a defense. See 
Princeton Univ. Press. Michigan Document Servs., Inc., 99 
F.3d 1381, 1389 (6th Cir. 1999) (en banc); Los Angeles News 
Serv. v. Tullo, 973 F.2d 791 (9th Cir. 1992). 

These principles are as applicable to companies that pro- 
duce databases as they are to computer programmers and 
copy-shops and apply irrespective of whether the material that 
has been copied consists of a software program or newspaper 
and magazine articles. 

This being so, there is no question but that, by copying the 
article-files they receive from the magazines and newspapers 

38 

into their servers, drives and discs, the database petitioners 
violated respondents’ copyrights. There is similarly no ques- 
tion but that the print publishers contributed to and are vicari- 
ously liable for the database petitioners’ infringements. 

C. Feist And The Majority And Dissenting Opinions 

In Abend Are In Accord. 

Feist Publications v. Rural Telephone: Even if there were 
authority to the contrary, which there is not, this Court’s de- 
cision in Feist Publications, Inc. v. Rural Telephone Service 
Co., Inc., 499 U.S. 340 (1991), would require affirmance of 
the judgment in respondents’ favor. Let’s examine why. 

Assume for the moment that we have an issue of a news- 
paper that consists, in part, of freelance contributions and, 
in part, of staff-written articles: F1 + F2 + F3 + S1 + S2 + S3. 
As published, the newspaper contains graphics, photographs, 
comics, a cross-word puzzle, and a distinct format. The pub- 
lisher of the newspaper enters into an agreement with Mead 
under which it licenses the articles from its newspaper for in- 
clusion in NEXIS’ database. Pursuant to this agreement, every 
day at a particular time it sends Mead article-files for pro- 
cessing and incorporation into the database. All other elements 
of the collective work are discarded or “excluded.” Each arti- 
cle is added to the database in a separate electronic envelope 
and made separately and individually retrievable. 

What do we have? Do we have, as petitioners contend, an 
“electronic copy” of the print publisher’s newspaper to which 
its collective work copyright extends? Or, do we simply have 
“copies” of individual preexisting articles, some of whose 
copyrights are owned by their freelance authors and others of 
which are owned by a publisher-employer? 

Under Feist, this Court recognized that “[t]he two funda- 
mental criteria of copyright protection [are] originality and 
fixation in tangible form.” 499 U.S. at 355, quoting from 
H.R.Rep. No. 94-1476, p. 51, J.A. 692a, S.Rep. No. 94-473, 

p. 50, LVI 242. For a work to be original, it “must be original 
to the author.” Id. at 345. For a work to be “fixed,” it must be 
embodied in a material object in a “sufficiently permanent or 

39 

stable” form “to permit it to be perceived, reproduced, or 
otherwise communicated . . .”. 17 U.S.C. § 101. 

Neither of these criteria allows the author of the collective 
work to claim that its copyright extends to the materials in 
any database at issue here. First, because in the database, the 
only works that are in a sufficiently permanent or stable form 
to be perceived are the individual articles, and not the col- 
lective work proper. See Matthew Bender & Co., Inc. v. West 
Publishing Co., 158 F.3d 693, 702-703 (2d Cir. 1998), cert. 
den’d, 526 U.S. 1154 (1999). Second, because the articles with 
whose provenance we are concerned clearly owe their origin 
to the freelance writers as opposed to the author of the collec- 
tive work. 

In sum, there is simply nothing about or in the embodiment 
of the freelance articles fixed in the database that “display[s] 
the stamp of the [collective work] author’s originality.” 499 
U.S. at 350 (material in brackets added). 

Stewart v. Abend: The question in Abend was whether the 
author of a derivative work could continue to exhibit, copy, 
and distribute its work even though it no longer had a valid 
license in the work on which it was based. The majority said 
“no;” the dissent said “yes.” In the majority’s view, the copy- 
rights in the two works were separate and distinct and, “[s]o 
long as the pre-existing work remains out of the public do- 
main, its use is infringing if one who employs the work does 
not have a valid license or assignment for use of the pre- 
existing work.” 495 U.S. at 223. The dissent believed that, 
under the 1909 Act, the author of the pre-existing work had 
the power to “sell the right to make a derivative work that 
upon creation and copyright would be completely indepen- 
dent of the original work.” 495 U.S. at 244. 

In passing, the dissent also noted its concern that the author 
of a derivative work might be induced to spend considerable 
time, energy, and effort in creating a derivative work that it 
could not then use. 495 U.S. at 255 n. 22. That concern is not 
present here. Respondents acknowledge that petitioners can 
reproduce and distribute their entire collective works, inclu- 

40 

sive of contributions. That is precisely what § 201(c) of the 
Act permits them to do. What they cannot do is reproduce and 
distribute contributions other than as part of a fixed collective 
work. 

Since it is the latter that petitioners really want, however, 
what they are seeking is something far more radical than 
the petitioners in Abend or the Court in Rohauer v. Killiam 
Shows, Inc., 551 F.2d 484 (2d Cir.), cert. denied, 431 U.S. 
949 (1977), ever envisioned. They are not claiming that, by 
withholding his permission, the author of an incorporated 
contribution is preventing them from reproducing and dis- 
tributing their collective works. They are claiming that their 
copyright in the collective work has somehow vested them 
with limited exclusive rights in the underlying contributions. 
They argue that they can exercise those rights in a particular 
contribution, so long as they simultaneously exercise similar 
rights in the other articles that had once appeared together 
with it in an issue of a newspaper. 

While petitioners might conceivably have had an argument 
under the 1909 Act, the same absolutely cannot be said with 
respect to the current one. As the dissent in Abend duly noted, 
495 U.S. at 243 n. 5, there is a critical respect in which the 
1909 and 1976 Acts differ. The language of sections 3 and 7 
of the 1909 Act extended composite and derivative work 
copyrights to “all the copyrightable component[s]” of such 
works, including “all matter therein in which copyright is al- 
ready subsisting.” 1909 Act, 17 U.S.C. § 3 (1976 ed.). Section 
103 (b) of the 1976 Act, on the other hand, provides that 
“[t]he 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 . . .”. 17 U.S.C. § 103(b) (emphasis added). 

23 

23 Petitioners omit this phrase entirely when they quote § 103(b) in their 
brief. Pet.Bf. 7. Indeed, they omit the entire first sentence of the pro- 
vision. Id. Having thus truncated the provision, they then claim that they 
have been afforded a copyright under § 103(b) that entitles them to repro- 
duce and distribute the whole of their collective works including any 
incorporated individual contributions. Pet.Bf. 15. If that were true — i.e., 

41 

IV. Petitioners’ Myriad Defenses: 

Petitioners’ defenses may be divided into six categories. 

A. The “We’re Clean, It Is The End-Users Who 

Are Guilty” Defense 

Petitioners distort the decision below to suggest that it de- 
pends upon vicarious liability for acts by end-users. It does 
not. Respondents charged petitioners with direct infringe- 
ment for their own delivery, transmission and replication of 
freelance contributions other than pursuant to the § 201(c) 
privilege. Third-party conduct is therefore irrelevant. See 
Sony, supra at 446; Princeton Univ. Press, supra at 1389 (en 
banc); Los Angeles News Serv. v. Tullo, 973 F.2d 791 (9 

th 

Cir. 1992). Accord Pet.Bf. 19; Publishers’ Amicus 16-17; 
Database Producers’ Amicus 22. 

Petitioners also suggest, at least subliminally, that acts by 
historians and researchers that might constitute “fair use” 
should immunize the companies that profit from the infringe- 
ment. See Burns Amicus. End-users can no more save peti- 
tioners from liability than they can be made to take the blame. 
See Princeton Univ. Press, supra (holding that copy-shop could 
not avail itself of fair use defense belonging to end user). 

24 

B. “The Medium Made Me Do It” Defense 

Petitioners have claimed for a long time now, in terms that 
were entirely conclusory, that whatever they have done in 
placing materials in the databases, they were required to do by 
the medium. J.A. 375a ¶ 12, J.A. 379a ¶ 6. From this asser- 
tion (without competent evidentiary support), they argue that 

if § 103(b) and § 106 of the Act themselves afforded collective work au- 
thors that prerogative — § 201(c) would be surplusage. 

Far from being surplusage, the privilege provided in § 201(c) is actu- 
ally essential to newspapers and magazines. Without it, they would only be 
able to print such materials as they either owned (i.e., were encompassed by 
their limited copyright) or they had been licensed to use. What the privi- 
lege affords them is a mechanical license to print and distribute the whole. 

24 It is really the petitioners, not respondents, who are relying on third- 
party conduct. 

42 

if they are entitled to utilize the electronic medium at all, then 
they must be allowed to do exactly what they have done. See, 

e.g., Cert.Reply 10. 

There are three fallacies in this argument. First, the princi- 
ple of medium-neutrality, upon which this argument is based, 
does not mean what petitioners say its means. It means that a 
work is protected in the medium in which the author first 
creates the work and in which he thereafter reproduces it or 
authorizes it to be reproduced. It does not mean that someone 
who gets a license to use the work gets a license to exploit it 
in all media. In other words, the principle protects and was 
designed to protect the copyrightholder and his creations and 
not to afford rights to “licensees.” 

It is significant therefore that, in this case, the print pub- 
lishers are necessarily in the position of “licensees” — as op- 
posed to copyrightholders — with respect to the freelance 
contributions. 17 U.S.C. § 103(b) (the copyright in a compil- 
ation extends only to the materials contributed by its author 
and not to preexisting materials). And, that the very limited 
license they have been given by § 201(c) does not, on its 
face, permit them to use electronic information storage and 
retrieval systems. See Points I(C) and II(C), ante. 

In any event, even if petitioners were correct that they are 
entitled to use any and all media, the principle of medium- 
neutrality cannot conceivably be construed to mean that they 
are entitled to use any and all “formats.” For instance, it could 
not rationally be construed to mean that they are entitled 
to use a format that involves the exploitation of individual 
articles (e.g., printed broadsides). As petitioners themselves 
acknowledge, the purpose of § 201(c) was to prevent such 
exploitation. Cert.Pet. 6. 

Third, there is no question but that technologically peti- 
tioners could, if they chose, avail themselves of the electronic 
medium to publish intact copies of their publications. This 
fact is established not only by the Williams Affidavit, J.A. 

43 

122a-151a, but also by petitioners’ own evidence in the case 

25 

and the averments of their amici. See, e.g., AIPLA Amicus 13 
(describing the scenario in which publishers “electronically 
scan[ ] the newspaper in which the contribution appears in its 
entirety); NGS Amicus 8 and 9 n. 2 (describing image CD- 
ROMs in which “the individual contribution remains in the 
‘particular collective work’ in which it originally appeared” 
and “every page of every issue remains precisely as it was 
in the original paperbound version . . .”); and Print Publishers’ 
Amicus 13 (describing “visual formats that, like the photo- 
graphic copies presently used in microfilm, replicate the 
column format, typeface, and other visual incidents of the 
original publication”). Petitioners chose not to create data- 
bases with intact “issues,” not because the medium wouldn’t 
let them, but because they felt that the market wouldn’t. 

C. The “Inchoate Copy” Defense: 

At pages 22-23 of its brief and in notes 15 and 17, peti- 
tioners suggest that even if what they have placed into the 
databases are individual articles as opposed to collective 
works, the Court is nonetheless required to conclude as a 
matter of law that the databases contain “copies” of the col- 
lective works from which the articles derived. They base this 
argument on two alleged facts: (1) the fact that, although dis- 
persed throughout the database, allegedly all of the “editorial” 
components of an issue are present somewhere in it, and (2) 
the fact that, if he chooses, an end-user can conduct a date- 
and-periodical search that will yield all of the articles that 
had once appeared together in a collective work. 

25 That evidence establishes that The New York Times Company rou- 
tinely delivered copies of two sections of its Sunday newspaper in their 
undeconstructed form to UMI so that UMI could subject them to digital 
scanning. BA ¶ 53, J.A. 95a. Obviously, The New York Times could have 
chosen to deliver the entire paper. 

By the same token, UMI could have chosen to create a database that 
contained continuous electronic scans or intact images of entire period- 
icals. See, generally, Williams Aff., J.A. 122a-151a. Instead, it chose to 
create the GPO database and make “article copies” available. See footnote 
1, ante. 

44 

Contrary to petitioners’ contention, neither of these alleged 
facts can be made the basis for concluding that the database 
contains a “copy” of the collective work. Recognizing the 
subsistence of copyright protection in the first instance would 
extend copyright protection to the “idea” of a collective work, 
as opposed to its “expression,” which is clearly improper. See 
generally Goldstein v. California, 412 U.S. 546, 561 (1973) 
(“[T]he word ‘writings’ . . . include[s] any physical rendering 
of the fruits of creative, intellectual or aesthetic labor”); Mazer 

v. Stein, 347 U.S. 201, 214 (1954); Burrow-Giles Lithographic 
Co. v. Sarony, 111 U.S. 53, 58 (1884). Recognizing the sub- 
sistence of copyright protection in the second instance would 
impermissibly extend copyright protection to a “process” or 
“procedure” in violation of 17 U.S.C. § 102(b). 

In any event, as the Second Circuit has made irrefutably 
clear in Matthew Bender & Co. v. West Publishing Co., 158 
F.2d 693, 702-703, 705-06 (2d Cir. 1998), cert. den’d, 526 
U.S. 1154 (1999), a collective work is not “fixed” in a data- 
base if it can only be perceived with the aid of a machine or 
device “after another person uses the machine to re-arrange 
the material into the copyrightholder’s arrangement.” Id. at 
702 (emphasis added). See footnote 2, ante. Obviously, with- 
out a fixed embodiment of the collective work, there can be no 
“copy.” Id. at 702-03. 17 U.S.C. § 101 (definition of “copies”). 

D. The “Enough Has Been Preserved” Defense: 

At pages 40-44 of their brief, petitioners suggest that even 
if the databases at issue do not contain “copies” of the print 
publishers’ collective works (in either an original or revised 
form), each of them nonetheless constitutes a “revision” of 
these collective works as a matter of law. 

26 They make this 
claim on the ground that, allegedly, the databases “sufficiently 
preserve” the “selection” and “arrangement” of the print pub- 
lishers’ newspapers. Contrary to petitioners’ suggestion, how- 
ever, neither of the lower courts found that the “arrangement” 
of the print publishers’ collective works had been preserved. 

26 As noted previously, petitioners repudiated this theory below. See 
footnote 5, ante. 

45 

They both found the opposite. (4a, 15a, 29a). And, while the 
District Court did agree, as a matter of law, that “selection” 
had been preserved, its finding was very specific. It based its 
conclusion on the following two facts: (1) that — again — 
although dispersed, all of the editorial elements of an issue are 
allegedly present somewhere in the database (70a); and (2) the 
further fact that when an individual article is displayed, it 
bears a legend or header that identifies the particular day and 
particular periodical in which the article first appeared. (71a). 

Neither of these facts affords a basis for concluding as a 
matter of law that any copyrightable aspects of a collective 
work have been preserved, least of all the copyrightable 
aspect appropriately identified as an issue’s “selection.” The 
header or legend merely represents a statement of historical 
fact. As such, it is unquestionably non-copyrightable. See, 

e.g., Feist, 499 U.S. 340, 348 (1991); Harper & Row, Pubs. 

v. Nation Enters., 471 U.S. 539, 544, 547, 556 (1985). And, 
even if absolutely all of the editorial elements of a periodical 
are present in the database, they cannot be said to “display 
the stamp of the [collective work] author’s originality” as 
long as they are dispersed, Feist, 499 U.S. at 350 (material in 
brackets added). To paraphrase Matthew Bender v. West Pub- 
lishing again, if an issue’s “selection” can only be perceived 
by a machine after a person other than the collective work 
author has used it to gather together the articles making up 
the “selection,” then the “selection” is not fixed, embedded 
or embodied in the underlying server or disc. See Matthew 
Bender, 158 F.3d at 702, 704-06. See also EPM Communi- 
cations, Inc. v. Notara, Inc., 2000 U.S.Dist. LEXIS 11533 
(S.D.N.Y. August 11, 2000). And, if it is not fixed, embedded 
or embodied in the underlying server or disc, it is difficult to 
see how it can have been “sufficiently preserved.” 

Petitioners’ error consists in their having confused the un- 
copyrightable process of selecting articles and the fact that 
individual articles have been selected with the “expression” 

46 

that results from the publication of those articles together as 
an issue. There is a clear distinction between the two. Only 
the latter is copyrightable. See generally International News 
Service v. Associated Press, 248 U.S. 215 (1918). Thus, the 
copyright in a compilation will not extend to editorial deci- 
sions — whether they are to select a particular article for 
publication at an unspecified time or a group of articles for 
publication together as an issue. Both of these “selection” de- 
cisions involve industrious effort, but not expression. Id. It is 
only when the articles that have been selected are in fact pub- 
lished together as an identifiable group that the process of 
selection bears copyrightable fruit that is original to the col- 
lective work author. 

To hold otherwise and predicate a finding of copyright- 
ability on one or another of the two types of pre-publication 
activities referred to above, instead of on the expression that 
ultimately results from them, would be to reward what Feist 
has said can no longer be rewarded under the copyright laws: 
“sweat of the brow.” The fact that, here, we may be dealing 
with “sweat of the high-brow” cannot change that result. 

E. The “Simultaneous” or “Aggregate Uses” Defense 

In the final analysis, petitioners’ arguments reduce to the 
following proposition: they can properly make use of an indi- 
vidual article under § 201(c) as long as they simultaneously 
make use of all (or most) 

27 of the other individual articles 
that had once appeared together with it in an issue. See, e.g., 
J.A. 471a at ¶¶ 7, 9, 473a at ¶ 15, 475a at ¶ 22. The Second 
Circuit correctly rejected this argument: 

27 Petitioners’ definition of the word “all” or phrase “entire editorial con- 
tents” shifts from publisher to publisher and database to database. Thus, 
the phrase “entire editorial contents” means, in the case of Newsday, the 
editorial contents except for wireservice, freelance and certain syndicated 
materials, Exh. 40, M003719, ¶ 11, while in the case of Time, Inc., it 
means, the editorial contents minus “such portions of the materials which 
Licensor does not have the right to include” and “materials from special 
issues,” T000019, Sched. A, and in the case of The New York Times and 
GPO, the “entire editorial contents” of the Sunday paper means the con- 
tents of only two sections of it — far less than the requisite one-half. 

47 

Under Publishers’ theory of Section 201(c), the question 
of whether an electronic database infringes upon an in- 
dividual author’s article would essentially turn upon 
whether the rest of the articles from the particular edi- 
tion in which the individual article was published could 
also be retrieved individually. However, 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 Pub- 
lisher also offered for individual sale all of the other ar- 
ticles from the particular edition. We see nothing in the 
revision provision that would allow the Publishers to 
achieve the same goal indirectly through NEXIS. (12a- 
13a). 

Aside from violating the very principles of media-neutrality 
that petitioners have purported to champion, petitioners’ read- 
ing of § 201(c) would enable a collective work author to ex- 
tend its copyright to preexisting works in clear violation of 
§ 103(b). 

In addition, their reading is irreconcilable with the plain 
language of § 201(c). Section 201(c) does not provide for a 
privilege of using an article “at the same time as” other indi- 
vidual articles, but only for using an article “as part of ” a 
collective work. 

28 

F. And, Finally, The In Terrorem Defense: 

Petitioners and their chorus of amici seek to rewrite the 
statute by threatening that upholding the decision below will 
“eviscerate” a database judges and attorneys tend to rely upon. 
See generally Publishers’ Amicus 2-4, Database Producers’ 
Amicus 23-27, Burns Amicus 4-6. Besides the fact that such 
an argument demeans the Court, there are at least five answers 
to petitioners’ “sky is falling” argument. The Court itself has 
given three of them in other copyright cases — two in Sony 

28 Petitioners concede that the activities of the research and photocopying 
service in Ryan v. Carl Corp., 23 F.Supp. 2d 1146 (N.D.Cal. 1998), were 
infringing. Pet.Bf. 33 n. 22. Assuming the invalidity of the “aggregate 
uses” defense, petitioners’ activities with respect to the GPO CD-ROMs 
are indistinguishable from those activities. 

48 

alone. There, Justice Stevens, writing for the majority, appro- 
priately rejected arguments aimed at persuading the Court that, 
socially, a certain outcome was required. The Court stated: 

The stated desires of amici concerning the outcome of 
this or any litigation are no substitute for a class action, 
are not evidence in the case, and do not influence our 
decision; we examine an amicus curiae brief solely for 
whatever aid it provides in analyzing the legal questions 
before us. 

Sony, supra, 464 U.S. at 434 n. 16. The dissent, sounding a 
similar theme, added that focusing on the question of whether 
a particular result would or would not increase the store of 
creative works available to the public puts the cart before the 
horse. It “simply confuses the question of liability with the 
difficulty of fashioning an appropriate remedy.” Sony, supra, 
464 U.S. at 494. Similarly, in Abend, 495 U.S. 207, 228 (1990), 
Justice O’Connor wrote for the Court that comparable fears 
flaunted by defendants there were “better addressed by Con- 
gress than the courts.” 

In any event, the threat that petitioners pretend would be 
posed in this case by an affirmance has been grossly exag- 
gerated. See Garson Opp. 10-11. In the final analysis, there is 
not one iota of evidence that the panic that petitioners have 
labored to create is warranted — or, indeed, anything other 
than a dramatic device. The logistical problems they say exist 
are clearly soluble compared to other, far more intractable 
ones, solved with ingenuity and good faith. 

V. The Judgment Of The Second Circuit Can Be Affirmed 
On Two Additional Grounds. 

The judgment of the Court of Appeals in this case can also 
be affirmed on two grounds the court did not reach: (1) that 
since the privilege could not be transferred to the database 
petitioners, their actions were necessarily infringing, see Points 
I(A) and II(A), ante, and (2) that, notwithstanding the fact that, 
in general, the Act is medium-neutral, the very limited “li- 
cense” publishers have been afforded in § 201(c) is not. By 

49 

placing respondents’ articles into electronic databases, there- 
fore, the database producers infringed respondents’ rights. 

The publisher-petitioners, in either event, are guilty of con- 
tributory and vicarious infringement. 

VI. There Is No Conflict Between The Second Circuit’s 
Decision And The Seminal Decisions Of This Court. 
Those Cases Are Entirely Consistent With, Indeed, 
Supportive Of, The Second Circuit Decision. 

A. The Conflict With Feist Has Proved To Be 

Illusory. 

Feist fully supports — if indeed it does not require — the 
decision below. See discussions, ante, at pp. 11-12, 38-39. 

B. The Conflict With Sony Has Proved To Be 

Illusory. 

Before the lower Court, petitioners complained that res- 
pondents had not adduced any evidence of infringement by 
end users and insisted that, under Sony, they were required 
to do so. OA 66-67. Here, they complain that because the 
Second Circuit considered what could be retrieved from a 
database by an end-user its decision is “improperly end-user 
driven” and thus in conflict with Sony. Pet.Bf. 47. Both of the 
petitioners’ criticisms are unwarranted. 

As those who are at all technologically aware know, com- 
puter servers, drives and discs are “black boxes.” They are 
actually called this because, like the “black boxes” in an air- 
plane cockpit, the way one tells what is in a black box is by 
analyzing what comes out of it. 

So, too, with discs and drives. There are essentially two 
basic ways to tell what has been fixed in such material ob- 
jects and what is resident in them. One can analyze what was 
put into them or what comes out — that is, what can be 
retrieved. Respondents have simply looked at the issue from 
both perspectives. 

Obviously, there is a difference between analyzing what 
petitioners have made available for retrieval from the data- 

50 

bases in this case and what end users have actually or histori- 
cally retrieved. The latter was not done in this case — either 
by respondents or the Courts below — because it would have 
been irrelevant. As the District Court clearly recognized, this 
case is not like Sony. (33a n. 3). Petitioners have not been 
charged with manufacturing and marketing a staple article of 
commerce (such as a computer), which was used by others to 
infringe, but of themselves reproducing, distributing and 
offering the infringing works. The principles that Sony articu- 
lated, therefore — while of tremendous importance in other 
contexts — are neither applicable to nor in any way in con- 
flict with this case. 

CONCLUSION 

For the reasons stated herein and in the annexed letter of the 
Register of Copyrights, respondents respectfully request that 
the Court affirm the judgment entered by the Second Circuit. 

Dated: February 20, 2001 

New York, New York 

Respectfully submitted, 

EMILY MARUJA BASS, ESQ. 
Counsel of Record for 

Respondents Barbara Garson 
and Sonia Jaffe Robbins 
GAYNOR & BASS 
535 Fifth Avenue, 23rd Floor 
New York, N.Y. 10017 
(212) 953-4300 

Also on the Brief: 

LINDA A. BACKIEL 
MICHAEL J. GAYNOR 

A-1 

APPENDIX I 

A VIEWPOINT ON THE SUPREME COURT CASE 
NY TIMES V. TASINI – HON. JAMES P. McGOVERN 
(Extensions of Remarks – February 14, 2001) 

HON. JAMES P. McGOVERN 

OF MASSACHUSETTS 
IN THE HOUSE OF REPRESENTATIVES 
Wednesday, February 14, 2001 

Mr. McGOVERN. Mr. Speaker, I submit for the RECORD 
this letter from Marybeth Peters, the Register of Copyrights 
at the U.S. Office of Copyrights, establishing her position on 
the U.S. Supreme Court Case, NY Times versus Tasini. 

REGISTER OF COPYRIGHTS, 
LIBRARY OF CONGRESS, 
Washington, DC. February 14, 2001 

Congressman JAMES P. MCGOVERN, 
Cannon House Office Building, 
Washington, DC. 

DEAR CONGRESSMAN MCGOVERN: I am respond- 
ing to your letter requesting my views on New York Times v. 
Tasini. As you know, the Copyright Office was instrumental 
in the 1976 revision of the copyright law that created the 
publishers’ privilege that is at the heart of the case. I believe 
that the Supreme Court should affirm the decision of the 
court of appeals. 

In Tasini, the court of appeals ruled that newspaper and 
magazine publishers who publish articles written by freelance 
authors do not automatically have the right subsequently to 
include those articles in electronic databases. The publishers, 
arguing that this ruling will harm the public interest by re- 
quiring the withdrawal of such articles from these databases 
and irreplaceably destroying a portion of our national historic 
record, successfully petitioned the Supreme Court for a writ 
of certiorari. 

The freelance authors assert that they have a legal right to 
be paid for their work. I agree that copyright law requires the 

A-2 

publishers to secure the authors’ permission and compensate 
them for commercially exploiting their works beyond the 
scope of section 201(c) of the Copyright Act. And I reject the 
publishers’ protests that recognizing the authors’ rights would 
mean that publishers would have to remove the affected ar- 
ticles from their databases. The issue in Tasini should not be 
whether the publishers should be enjoined from maintaining 
their databases of articles intact, but whether authors are en- 
titled to compensation for downstream uses of their works. 

The controlling law in this case is 17 U.S.C. § 201(c), which 
governs the relationship between freelance authors and pub- 
lishers of collective works such as newspapers and maga- 
zines. Section 201(c) is a default provision that establishes 
rights when there is no contract setting out different terms. 
The pertinent language of § 201(c) states that a publisher ac- 
quires “only” a limited presumptive privilege to reproduce and 
distribute an author’s contribution in “that particular collective 
work, any revision of that collective work, and any later col- 
lective work in the same series.” 

The Supreme Court’s interpretation of section 201(c) will 
have important consequences for authors in the new digital 
networked environment. For over 20 years, the Copyright Of- 
fice worked with Congress to undertake a major revision of 
copyright law, resulting in enactment of the 1976 Copyright 
Act. That Act included the current language of §201(c), which 
was finalized in 1965 of interests. 

Although, in the words of Barbara Ringer, former Register 
and a chief architect of the 1976 Act, the Act represented “a 
break with the two-hundred-year-old tradition that has identi- 
fied copyright more closely with the publisher than with the 
author” and focused more on safeguarding the rights of au- 
thors, freelance authors have experienced significant economic 
loss since its enactment. This is due not only to their unequal 
bargaining power, but also to the digital revolution that has 
given publishers opportunities to exploit authors’ works in 
ways barely foreseen in 1976. At one time these authors, who 
received a flat payment and no royalties or other benefits from 
the publisher, enjoyed a considerable secondary market. After 

A-3 

giving an article to a publisher for use in a particular collec- 
tive work, an author could sell the same article to a regional 
publication, another newspaper, or a syndicate. Section 201(c) 
was intended to limit a publisher’s exploitation of freelance 
authors’ works to ensure that authors retained control over 
subsequent commercial exploitation of their works. 

In fact, at the time §201 came into effect, a respected attor- 
ney for a major publisher observed that with the passage of 
§201(c), authors “are much more able to control publishers’ 
use of their work” and that the publishers’ rights under § 201 
(c) are “very limited.” Indeed, he concluded that “the right to 
include the contribution in any revision would appear to be 
of little value to the publisher.” Kurt Steele, “Special Report, 
Ownership of Contributions to Collective Works under the 
New Copyright Law,” Legal Briefs for Editors, Publishers, 
and Writers (McGraw-Hill, July 1978). 

In contrast, the interpretation of §201(c) advanced by pub- 
lishers in Tasini would give them the right to exploit an article 
on a global scale immediately following its initial publica- 
tion, and to continue to exploit it indefinitely. Such a result 
is beyond the scope of the statutory language and was never 
intended because, in a digital networked environment, it 
interferes with authors’ ability to exploit secondary markets. 
Acceptance of this interpretation would lead to a significant 
risk that authors will not be fairly compensated as envisioned 
by the compromises reached in the 1976 Act. The result would 
be an unintended windfall for publishers of collective works. 

THE PUBLIC DISPLAY RIGHT 

Section 106 of the Copyright Act, which enumerates the 
exclusive rights of copyright owners, includes an exclusive 
right to display their works publicly. Among the other exclu- 
sive rights are the rights of reproduction and distribution. The 
limited privilege in § 201(c) does not authorize publishers to 
display authors’ contributions publicly, either in their original 
collective works or in any subsequent permitted versions. 
It refers only to “the privilege of reproducing and distributing 
the contribution.” Thus, the plain language of the statute does 

A-4 

not permit an interpretation that would permit a publisher 
to display or authorize the display of the contribution to the 
public. 

The primary claim in Tasini involves the NEXIS database, 
an online database which gives subscribers access to articles 
from a vast number of periodicals. That access is obtained by 
displaying the articles over a computer network to subscribers 
who view them on computer monitors. NEXIS indisputably 
involves the public display of the authors’ works. The other 
databases involved in the case, which are distributed on CD- 
ROMs, also (but not always) involve the public display of the 
works. Because the industry appears to be moving in the di- 
rection of a networked environment, CD-ROM distribution 
is likely to become a less significant means of disseminating 
information. 

The Copyright Act defines “display” of a work as showing 
a copy of a work either directly or by means of “any other 
device or process.” The databases involved in Tasini clearly 
involve the display of the authors’ works, which are shown to 
subscribers by means of devices (computers and monitors). 

To display a work “publicly” is to display “to the public, by 
means of any device or process, whether the members of the 
public capable 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.” The NEXIS database permits individual 
users either to view the authors’ works in different places at 
different times or simultaneously. 

This conclusion is supported by the legislative history. The 
House Judiciary Committee Report at the time §203 was fi- 
nalized referred to “sounds or images stored in an information 
system and capable of being performed or displayed at the 
initiative of individual members of the public” as being the 
type of “public” transmission Congress had in mind. 

When Congress established the new public display right in 
the 1976 Act, it was aware that the display of works over 
information networks could displace traditional means of re- 
production and delivery of copies. The 1965 Supplementary 

A-5 

Report of the Register of Copyrights, a key part of the legis- 
lative history of the 1976 Act, reported on “the enormous 
potential importance of showing, rather than distributing copies 
as a means of disseminating an author’s work” and “the im- 
plications of information storage and retrieval devices; when 
linked together by communications satellites or other means,” 
they “could eventually provide libraries and individuals 
throughout the world with access to a single copy of a work 
by transmission of electronic images.” It concluded that in 
certain areas at least, “ ‘exhibition’ may take over from ‘repro- 
duction’ of ‘copies’ as the means of presenting authors’ works 
to the public.” The Report also stated that “in the future, tex- 
tual or notated works (books, articles, the text of the dialogue 
and stage directions of a play or pantomime, the notated score 
of a musical or choreographic composition etc.) may well be 
given wide public dissemination by exhibition on mass com- 
munications devices.” 

When Congress followed the Register’s advice and created 
a new display right, it specifically considered and rejected a 
proposal by publishers to merge the display right with the re- 
production right, notwithstanding its recognition that “in the 
future electronic images may take the place of printed copies 
in some situations.” H.R. Rep. No. 89-2237, at 55 (1966). 

Thus, §201(c) cannot be read as permitting publishers to 
make or authorize the making of public displays of contri- 
butions to collective works. Section 201(c) cannot be read as 
authorizing the conduct at the heart of Tasini. 

The publishers in Tasini assert that because the copyright 
law is “media-neutral,” the § 201(c) privilege necessarily re- 
quires that they be permitted to disseminate the authors’ arti- 
cles in an electronic environment. This focus on the “media- 
neutrality” of the Act is misplaced. Although the Act is in 
many respects media-neutral, e.g., in its definition of “copies” 
in terms of “any method now known or later developed” and 
in §102’s provision that copyright protection subsists in works 
of authorship fixed in “any tangible medium of expression,” 
the fact remains that the Act enumerates several separate rights 
of copyright owners, and the public display right is indepen- 

A-6 

dent of the reproduction and distribution rights. The media- 
neutral aspects of the Act do not somehow merge the separate 
exclusive rights of the author. 

REVISIONS OF COLLECTIVE WORKS 

Although §201(c) provides that publishers may reproduce 
and distribute a contribution to a collective work in three par- 
ticular contexts, the publishers claim only that their databases 
are revisions of the original collective works. 

Although “revision” is not defined in Title 17, both com- 
mon sense and the dictionary tell us that a database such as 
NEXIS, which contains every article published in a multitude 
of periodicals over a long period of time, is not a revision of 
today’s edition of The New York Times or last week’s Sports 
Illustrated. A “revision” is “a revised version” and to “revise” 
is “to make a new, amended, improved, or up-to-date version 
of” a work. Although NEXIS may contain all of the articles 
from today’s New York Times, they are merged into a vast 
database of unrelated individual articles. What makes today’s 
edition of a newspaper or magazine or any other collective 
work a “work” under the copyright law — its selection, coor- 
dination and arrangement — is destroyed when its contents 
are disassembled and then merged into a database so gigantic 
that the original collective work is unrecognizable. As the 
court of appeals concluded, the resulting database is, at best, 
a “new anthology,” and it was Congress’s intent to exclude 
new anthologies from the scope of the §201(c) privilege. It is 
far more than a new, amended, improved or up-to-date version 
of the original collective work. 

The legislative history of §201(c) supports this conclusion. 
It offers, as examples of a revision of a collective work, an 
evening edition of a newspaper or a later edition of an ency- 
clopedia. These examples retain elements that are consistent 
and recognizable from the original collective work so that a 
relationship between the original and the revision is apparent. 
Unlike NEXIS, they are recognizable as revisions of the 
originals. But as the Second Circuit noted, all that is left of 

A-7 

the original collective works in the databases involved in 
Tasini are the authors’ contributions. 

It is clear that the databases involved in Tasini constitute, in 
the words of the legislative history, “new,” “entirely different” 
or “other” works. No elements of arrangement or coordin- 
ation of the pre-existing materials contained in the databases 
provide evidence of any similarity or relationship to the 
original collective works to indicate they are revisions. Ad- 
ditionally, the sheer volume of articles from a multitude of 
publishers of different collective works obliterates the rela- 
tionship, or selection, of any particular group of articles that 
were once published together in any original collective work. 

REMEDIES 

Although the publishers and their supporters have alleged 
that significant losses in our national historic record will occur 
if the Second Circuit’s opinion is affirmed, an injunction to 
remove these contributions from electronic databases is by no 
means a required remedy in Tasini. Recognizing that free- 
lance contributions have been infringed does not necessarily 
require that electronic databases be dismantled. Certainly fu- 
ture additions to those databases should be authorized, and 
many publishers had already started obtaining authorization 
even before the decision in Tasini. 

It would be more difficult to obtain permission retroactively 
for past infringements, but the lack of permission should not 
require issuance of an injunction requiring deletion of the au- 
thors’ articles. I share the concern that such an injunction would 
have an adverse impact on scholarship and research. However, 
the Supreme Court, in Campbell v. Acuff-Rose Music, Inc., 
and other courts have recognized in the past that sometimes a 
remedy other than injunctive relief is preferable in copyright 
cases to protect the public interest. Recognizing authors’ rights 
would not require the district court to issue an injunction when 
the case is remanded to determine a remedy, and I would hope 
that the Supreme Court will state that the remedy should be 
limited to a monetary award that would compensate the au- 
thors for the publishers’ past and continuing unauthorized 

A-8 

uses of their works. Ultimately, the Tasini case should be 
about how the authors should be compensated for the pub- 
lishers’ unauthorized use of their works, and not about whether 
the publishers must withdraw those works from their data- 
bases. 

Sincerely, 

Marybeth Peters, 
Register of Copyrights 

Congressman James P. McGovern 
430 Cannon House Office Building 
Washington, D.C. 20515 

A-9 

APPENDIX II 

SELECTED PROVISIONS OF 
THE COPYRIGHT ACT OF 1976 

17 U.S.C. § 103 

§ 103. Subject matter of copyright: Compilations and deri- 
vative works 

(a) The subject matter of copyright as specified by sec- 
tion 102 includes compilations and derivatives works, but 
protection for a work employing preexisting material in 
which copyright subsists does not extend to any part of the 
work in which such material has been used unlawfully. 

(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 pro- 
tection in the preexisting material. 

* * * 

17 U.S.C. § 106 

§ 106. Exclusive rights in copyrighted works 

Subject to sections 107 through 121, the owner of a copy- 
right under this title has the exclusive rights to do and to au- 
thorize any of the following: 

(1) to reproduce the copyrighted work in copies or phono- 
records; 

(2) to prepare derivative works based upon the copy- 
righted work; 

(3) to distribute copies or phonorecords of the copyrighted 
work to the public by sale or other transfer of owner- 
ship, or by rental, lease, or lending; 

(4) in the case of literary, musical, dramatic, and choreo- 
graphic works, pantomimes, and motion pictures and 

A-10 

other audiovisual works, to perform the copyright work 
publicly; 

(5) in the case of literary, musical, dramatic, and choreo- 
graphic works, pantomimes, and pictorial, graphic, or 
sculptural works, including the individual images of a 
motion picture or other audiovisual work, to display 
the copyrighted work publicly; and 

(6) in the case of sound recordings, to perform the copy- 
righted work publicly by means of a digital audio 
transmission. 

* * * 

17 U.S.C. § 201 

§ 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 ini- 
tially 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 dis- 
tributing the contribution as part of that particular collec- 
tive work, any revision of that collective work, and any 
later collective work in the same series. 

* * * 

17 U.S.C. § 501 

§ 501. Infringement of copyright. 

(a) Anyone who violates any of the exclusive rights of 
the copyright owner as provided by sections 106 through 
121, or of the author as provided in section 106A(a), or 
who imports copies or phonorecords into the United States 
in violation of section 602, is an infringer of the copyright 
or right of the author, as the case may be. . . . 

* * * 

A-11 

Definitional Sections: 

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: 

* * * 

A “collective work” is a work, such as a periodical issue, 
anthology, or encyclopedia, in which a number of con- 
tributions, 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 collec- 
tive 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 per- 
ceived, 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 phono- 
record, in which the work is first fixed. 

“Copyright owner”, with respect to any one of the ex- 
clusive 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 phono- 
record 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 ver- 
sions, each version constitutes a separate work. 

* * * 

A-12 

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 per- 
manent or stable to permit it to be perceived, repro- 
duced, 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. 

* * * 

“Literary works” are works, other than audiovisual 
works, expressed in words, numbers, or other verbal or 
numerical symbols or indicia, regardless of the nature of 
the material objects, such as books, periodicals, manu- 
scripts, phonorecords, film, tapes, disks, or cards, in 
which they are embodied. 

* * * 

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

* * * 

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 perfor- 
mance 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 
of receiving the performance or display receive it in 

A-13 

the same place or in separate places and at the same 
time or at different times. 

* * * 

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. 

* * * * *