No. 00-201 

IN THE 

6XSUHPH&RXUWRIWKH8QLWHG6WDWHV 

———— 

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

UNIVERSITY MICROFILMS INTERNATIONAL, 

Petitioners, 

v. 

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

Respondents. 

———— 

On Writ of Certiorari to the 
United States Court of Appeals 
for the Second Circuit 

———— 

BRIEF OF AMICI CURIAE AMERICAN SOCIETY OF 
MEDIA PHOTOGRAPHERS, INC. ET AL. 
IN SUPPORT OF RESPONDENTS 

———— 

VICTOR S. PERLMAN 
AMERICAN SOCIETY OF MEDIA 

PHOTOGRAPHERS 
150 North Second Street 
Philadelphia, PA 19106-1912 
L. DONALD PRUTZMAN 
Counsel of Record 
ANDREW BERGER 
TANNENBAUM HELPERN 

SYRACUSE & HIRSCHTRITT 
LLP 
900 Third Ave. 

New York, NY 10022 
(212) 508-6700 

WILSON-EPES PRINTING CO., INC. – (202) 789-0096 – WASHINGTON, D. C. 20001 

TABLE OF CONTENTS 

Page 

INTERESTS OF AMICI CURIAE ................................. 
1 

SUMMARY OF ARGUMENT..................................... 
5 

ARGUMENT................................................................. 9 

I. THE LEGISLATIVE HISTORY OF 
SECTION 201(c) DEMONSTRATES THAT 
IT WAS INTENDED TO PROTECT 
AUTHORS’ COPYRIGHTS IN CONTRIBU- 
TIONS TO COLLECTIVE WORKS AND TO 
GRANT PUBLISHERS LIMITED RIGHTS 
IN THOSE CONTRIBUTIONS......................... 
9 

A. Background of the 1909 Act ........................ 
10 

B. The Register’s 1961 Report.......................... 
11 

C. The Debate over the Register’s 

Recommendation ......................................... 12 

D. The 1964 Draft Bills .................................... 
15 

E. The 1965 Draft Bill and Register’s 

Supplementary Report.................................. 17 

F. The 1976 House Report ................................ 
20 

G. The Current Register’s Views...................... 
21 

II. THE DIRE CONSEQUENCES PREDICTED 

BY PETITIONERS AND THEIR AMICI ARE 
OVERSTATED AND MISLEADING.............. 22 

(i) 

ii 

TABLE OF CITED AUTHORITIES 

CASES: Page 

Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir. 
1988), aff’d on other grounds sub nom. 
Stewart v. Abend, 495 U.S. 417 (1990).............. 
24 

Amoco Prod. Co. v. Village of Gambell, 480 U.S. 
531 (1987).......................................................... 24 

Center for Creative Non-Violence v. Reid, 490 

U.S. 730 (1989).................................................. 
9 

Dun v. Lumbermen’s Credit Ass’n, 209 U.S. 20 
(1908)................................................................. 24 

Friends of the Earth, Inc. v. Laidlaw Envtl. 

Servs. (TOC), Inc., 528 U.S. 167 (2000)............ 
24 

Geisel v. Poynter Prods., Inc., 295 F. Supp. 331 
(S.D.N.Y. 1968) ................................................. 
11 

Richard Feiner & Co. v. Turner Entm’t Co., 98 

F.3d 33 (2d Cir. 1996)........................................ 
24 

Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697 
(2d Cir. 1941)..................................................... 
10 

Sony Corp. of Am. v. Universal City Studios, Inc., 
464 U.S. 417 (1984)........................................... 24, 25 

Tasini v. New York Times Co., 206 F.3d 161 (2d 

Cir. 2000) ........................................................... 
18 

Tasini v. New York Times Co., 972 F. Supp. 804 
(S.D.N.Y. 1997) ................................................. 
14 

Universal City Studios v. Sony Corp. of Am., 659 

F.2d 963 (9th Cir. 1981), rev’d on other 
grounds, 464 U.S. 417 (1984)............................ 
24 

Weinberger v. Romero-Barcelo, 456 U.S. 305 
(1982)................................................................. 23, 24 

STATUTES: 

1976 Act, Pub. L. No. 94-553, 90 Stat. 2541 

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

17 U.S.C. § 502(a) ............................................. 23 

iii 

TABLE OF CITED AUTHORITIES—Continued 

Page 

1909 Act, ch. 320, 35 Stat. 1075 

17 U.S.C. § 1...................................................... 

10 

17 U.S.C. § 3...................................................... 
6, 10 

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

OTHER AUTHORITIES:* 

147 Cong. Rec. E182 (daily ed. Feb 14, 2001) 
(letter from Marybeth Peters, Register of 
Copyrights, to Hon. James P. McGovern) ......... passim 

Copyright Clearance Center, CCC Services, at 
http://www.copyright.com/Services/services__ 
Portal.html (last visited Feb. 9, 2001)................ 
25 

Copyright Law Revision, Part 1............................. 
12 

Copyright Law Revision, Part 2.........................12, 13, 14 

Copyright Law Revision, Part 3............................. 
14 

Copyright Law Revision, Part 5.........................15, 16, 17 

Copyright Law Revision, Part 6.........................17, 18, 19 

Encyclopaedia, Encyclopædia Britannica Online, 
at http://search.eb.com/bol/topic?eu=108517& 
sctn=24 (last visited Feb. 9, 2001) ..................... 
14 

H.R. 11947, 88th Cong. (1964).............................. 
16 

H.R. Rep. No. 1476................................................ 20, 21 

National Writers Union, About the Publications 

Rights Clearinghouse, at http://www.nwu.org/ 
prc/prcabout.htm (last modified July 29, 
1999) .................................................................. 25 

3 Melville B. Nimmer & David Nimmer, 

Nimmer on Copyright (2000) ............................ 11, 24 

• Where abbrieviated, references to the legislative history correspond to 
the designations in the Table of Citation Conventions Used in This Brief 
listed infra at v-vi. 

iv 

TABLE OF CITED AUTHORITIES—Continued 

Page 

S. 3008, 88th Cong. (1964).................................... 
16 

Study 11 ................................................................. 10, 11 

Webster’s Third New International Dictionary 
(1993 ed.) ........................................................... 19 

v 

TABLE OF CITATION CONVENTIONS 
USED IN THIS BRIEF 

For clarity and ease of reference, Amici have adopted the 
same short form citations for legislative materials used by the 
Petitioners in their opening brief, which are reprinted below 
for the Court’s convenience. 

Full Title of Source 
Short Form 

Statutes 

Copyright Act of 1976, codified 

“Act” or “1976 Act” 

at Title 17, U.S.C. 

Copyright Act of 1909, ch. 320, 

“1909 Act” 

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

Congressional Committee Reports 

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

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

S. Rep. No. 473, 94th Cong., 

“S. Rep. No. 473” 

1st Sess. (1975) 

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

“H.R. Rep. No. 1476” 

2d Sess. (1976) 

Copyright Law Revision Studies and Reports 

Studies Prepared for the Sub- 
“Study 11” 

comm. on Patents, Trademarks 
and Copyrights of the Senate 
Comm. on the Judiciary, 86th 
Cong., 2d Sess., Study No. 11, 
Divisibility of Copyrights (A. 
Kaminstein) (1960) 

vi 

TABLE OF CITATION CONVENTIONS—Continued 

Full Title of Source (cont’d) 
Short Form 

Report of the Register of 
“Copyright Law Revision 

Copyrights on the General 

Part 1” 

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

Discussion and Comments on 
“Copyright Law Revision 

Report of the Register of Copy- 

Part 2” 

Rights on the General Revision 
of the U.S. Copyright Law, 88th 
Cong., 1st Sess. Copyright Law 
Revision, Part 2 (H. Judiciary 
Comm. Print 1963) 

Preliminary Draft for Revised 
“Copyright Law Revision 

U.S. Copyright Law and Discuss- 

Part 3” 

ions and Comments on the Draft, 
88th Cong., 2d Sess., Copyright 
Law Revision, Part 3 (H. 
JudiciaryComm. Print 1964) 

1964 Revision Bill with 
“Copyright Law Revision, 

Discussions and Comments 

Part 5” 

89th Cong., 1st Sess., Copy- 
right Law Revision, Part 5 (H. 
Judiciary Comm. Print 1965) 

Supplementary Report of the 
“Copyright Law Revision, 

Register of Copyrights on the 

Part 6” 

General Revision of the U.S. 
Copyright law; 1965 Revision 
Bill, 89th Cong., 1st Sess., 
Copyright Law Revision, 
Part 6 (H. Judiciary Comm. 
Print 1965) 

INTERESTS OF AMICI CURIAE 

The American Society of Media Photographers, Inc., et al. 
respectfully submit this brief as amici curiae in support of the 
Respondents Jonathan Tasini, et al. (collectively “Res- 
pondents”) in this case. A complete listing of the twenty 
organizations comprising the amici curiae is set forth in 
Appendix A to this brief.1 

The amici curiae organizations supporting the Respondents 
in this case represent the interests of a substantial proportion 
of freelance creators in the United States. In particular, the 
membership of the amici organizations include thousands of 
freelance photographers, writers, graphic artists, fine artists 
and cartoonists (collectively “freelance authors”) who 
produce an enormous range of creative material for 
publications distributed throughout the world, and for other 
clients outside of the publication arena. 

The vast majority of the freelance authors represented by 
amici retain the copyrights to their creative works. They do 
so because preserving, and to the extent possible exploiting, 
the economic value of those copyrights are essential to their 
economic survival. Whether their works are created on 
assignment for a client (e.g., shooting photographs in Bosnia 
for a national news magazine) or on their own initiative, the 
freelance authors represented by amici rely heavily on their 
copyrights for their livelihoods, and in many cases for their 
retirements. In fact, it is precisely the creative talents of 
freelance authors such as those represented by amici that the 
copyright laws are intended to nurture and sustain. 

1 Pursuant to this Court’s Rule 37.6, amici state that no counsel for any 
party authored this brief in whole or in part, and that no person or entity 
other than amici, its members, or its counsel, made a monetary 
contribution to the preparation or submission of this brief. The parties 
have consented to the filing of this amici curiae brief, and letters 
evidencing such consent have been filed with the Clerk of this Court, 
pursuant to S. Ct. R. 37.3. 

2 

These freelance authors have two principal interests in this 
case. The first interest is one that they share with all those 
who have an economic stake in an information age now at the 
beginning of a digital revolution. That interest is, in short, the 
right to participate in new markets for the reuse of published 
material, and thus to secure new potential sources of income. 

The rapid pace of technological change in an increasingly 
information-based economy has opened up new and 
potentially lucrative markets for what is colloquially called 
“content.” Publishers and other content distributors interested 
in exploiting these new markets can choose from a variety of 
media, ranging from print to multiple forms of digital media, 
in offering customers access to content. However techno- 
logically advanced or easily accessible these products or 
services may be in terms of use, their commercial success is 
nevertheless largely determined by the quality and appeal of 
the content itself. 

Freelance authors, no less than publishers, wish, and are 
entitled, to participate economically in the new markets for 
their works opened up by relatively new technologies such as 
digital media. Freelance authors are, like publishers, in the 
business of disseminating their works to the public. 
Publication photographers, for example, such as those 
represented by the American Society of Media Photographers 
(one of the amici submitting this brief), take photographs that 
they believe will be of interest to others. Publication 
photographers want their photographs to be seen and 
appreciated by the widest possible audience, for that is how 
they establish their reputations and, consequently, their value 
in the marketplace. 

It should go without saying that freelance authors expect to 
be compensated for the widespread dissemination of their 
works by publishers and others. For freelance authors, this 
case presents the question whether they can assert their 
copyrights to demand payment for the repackaging and reuse 

3 

of their content into “new media” products and services. The 
issue is not, as Petitioners portray it, whether freelance 
authors can or will use their copyrights to restrict 
dissemination of their works in such new media. That 
specter, conjured up by Petitioners and their amici, is 
consistent neither with the realities of the marketplace nor 
with the real-world objectives of freelance authors who want 
their works to be seen and appreciated by the public. Instead, 
the central issue in this case is whether freelance authors will 
be compensated for the repackaging and reuse of their works 
in new media. Petitioners wish to be the only beneficiaries of 
the economic potential of these new media. Freelance 
authors simply wish to share in this economic exploitation of 
their works. 

The second interest of freelance creators in this case is 
closely related to the first: it is to ensure the opportunity to 
realize the economic potential of their copyrighted works 
before their value is damaged or destroyed through 
worldwide and instantaneous distribution by digital media 
such as computer-based databases. While new media create 
opportunities for broader and more efficient distribution of 
copyrighted materials, digital media such as NEXIS also 
present the danger that the authors’ future markets for those 
works may effectively be destroyed. The instant availability 
of an article on NEXIS, for example, enables millions of 
people to gain access to the work via their computers. The 
widespread dissemination of copyrighted articles and 
photographs through other digital media such as CD-ROM 
often effectively precludes any further licensing of the works 
on a limited, or even any, basis. The ease of digital 
distribution of copyrighted materials may further impede, if 
not destroy, the non-exclusive licensing market for the works. 
In short, the only opportunity for freelance authors to obtain 
some economic return from the reuse of their works (beyond 
the compensation paid by publishers for one-time use of the 
material) is when they are dumped indiscriminately into large 

4 

databases available to millions by pressing a key on their 
computers. Thereafter, it is unlikely that anyone would be 
interested in paying the authors for the use of those works. 

This conclusion is reinforced by the views of the current 
Register of Copyrights, Marybeth Peters. In a letter to 
Congressman James P. McGovern expressing her views on 
this case, the Register observed that “freelance authors have 
experienced significant economic loss since” the enactment 
of the 1976 Act. 147 Cong. Rec. E182 (daily ed. Feb. 14, 
2001) (attached hereto as Appendix B), App. B 4a. This loss 
has occurred, in the Register’s judgment, in part because of 
the unequal bargaining power between authors and 
publishers. Id. Significantly, however, this loss has also been 
caused by the impact the digital revolution has had on what 
used to be a thriving secondary market for authors’ 
contributions to collective works. Id. Now that these 
contributions are readily accessible through electronic media 
such as NEXIS, no other publication, whether it be regional, 
national or a syndicate, is willing to pay the authors of such 
contributions for further uses of these works. Id. At the same 
time, according to the Register, that same digital revolution 
“has given publishers opportunities to exploit authors’ works 
in ways barely foreseen in 1976.” Id. 

Finally, the hard reality Petitioners never mention is that 
they have traditionally paid only for one-time publication of 
the works of freelance authors. For example, The New York 
Times currently pays freelance photographers a day rate of 
$150. See Second Cir. J.A. at A123, A295-96. This means 
that, for that money, The New York Times receives as many 
photographs as the photographer shoots on the day’s 
assignment, along with the first-time, one-time right to 
publish as many of those photographs as it chooses. These 
sums bear no relation to the downstream value of the works 
when they are republished in databases or CD-ROMs, and 
they have not changed significantly since the days long 
before digital databases and CD-ROMs were even heard of. 

5 

There is no negotiation over what additional compensation 
should be paid for the reuse; publishers take the position that 
none is owed to the creators of the works because of section 
201(c). Thus, the stark facts are that for a few hundred 
dollars, publishers claim the right initially to publish 
freelance articles and photographs, and then to drop them into 
databases and other media for further distribution for the 
exclusive benefit of publishers and their secondary 
distributors. 

As demonstrated below, and as further supported by the 
views of the Copyright Office regarding a provision that it 
was instrumental in drafting, this was not the bargain struck 
by authors and publishers, under the leadership of the 
Copyright Office, when the terms of section 201(c) were 
crafted and subsequently adopted by Congress. The 
unilateral reuse of authors’ works in databases and other 
media goes well beyond the narrow grant under section 
201(c) of the right to use photographs and articles in “any 
revision” of “that collective work” in which they first 
appeared. Accordingly, publishers and distributors of new 
media collections of collective works must be required to pay 
fair compensation to authors for this unauthorized reuse of 
their copyrighted works. 

SUMMARY OF ARGUMENT 

This case presents an old problem in a new guise. As is so 
often the case in statutes this Court has occasion to interpret, 
Congress did not define a key statutory term—“any revision” 
in section 201(c)—that has become a major point of dispute 
between authors and publishers. The origins of that dispute 
are found in the events and negotiations preceding the 
enactment of section 201(c) and the rest of the 1976 
Copyright Act. Those origins shed light on the true nature of 
the compromise crafted by the Copyright Office a decade 
before Congress eventually codified it in section 201(c) of the 
1976 Act. 

6 

Under the terms of that bargain, authors were given the 
assurance that they had been lacking under the 1909 Act: 
presumptive copyright ownership of their contributions to 
collective works. Publishers were accorded certain limited 
rights to use authors’ contributions—limited rights that were 
painstakingly negotiated and that were plainly meant to be 
subsidiary to the fundamental purpose of enhancing the 
copyright status of authors. Section 201(c), therefore, was 
enacted to rectify the unintended impact of the 1909 Act on 
the rights of authors, and to codify certain trade practices that 
reflected a fair allocation of rights between authors and 
publishers. Under the “indivisibility” doctrine of the 1909 
Act, publication of a “composite” (now collective) work 
under the publisher’s copyright notice vested copyright in the 
entire collective work, including the author’s contribution, in 
the publisher. 17 U.S.C. § 3 (1909 Act). The author thus 
became the mere licensee of his contribution, and was 
effectively foreclosed from protecting his rights in the 
contribution. 

Against that backdrop created by the 1909 Act, authors and 
publishers struggled to define their respective rights to 
contributions to collective works such as newspapers, 
magazines and encyclopedias. In the case of newspapers and 
magazines, publishers were generally given “first 
publication” rights only. With respect to certain kinds of 
collective works such as encyclopedias, publishers would 
have received the additional right to republish the 
contribution in later editions of the collective work. The 
1909 Act was generally viewed by the participants on both 
sides as impeding rather than facilitating these transactions. 

Section 201(c) of the 1976 Act swept away the legal 
obstacles erected by the 1909 Act to the authors’ transfers of 
limited rights in contributions to collective works while 
retaining copyright ownership of those contributions. In the 
words of the current Register of Copyrights, “[s]ection 201(c) 

7 

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.” 147 
Cong. Rec. E182 (daily ed. Feb. 14, 2001), App. B 4a. That 
purpose would be thwarted if section 201(c) is construed, as 
urged by Petitioners, to give publishers of collective works 
“an unintended windfall” at the expense of authors. Id. at 3. 

Between 1961 and 1965, when the Register of Copyrights 
prepared the first and last drafts of what became section 201, 
authors and publishers, together with the Copyright Office, 
negotiated the terms of a compromise that freed authors from 
the shackles imposed by the 1909 Act and gave publishers 
certain limited rights in those contributions, consistent with 
then-prevailing trade practices. Nothing in that compromise 
effectuated the open-ended grant to publishers that Petitioners 
urge should now be adopted as this Court’s statutory 
interpretation. 

Acceptance of Petitioners’ twisted interpretation of section 
201(c) would be a perverse and tragic outcome. Rather than 
view section 201(c) as what it was—an effort to restore 
authors’ copyrights in their contributions and at the same time 
grant publishers certain limited rights in those contributions 
consistent with then-prevailing trade practices—Petitioners 
would have this Court adopt an interpretation that would 
effectively eviscerate authors’ copyrights in their contrib- 
utions. This is precisely the opposite result sought to be 
achieved by the compromise negotiated by authors, 
publishers, and the Copyright Office, and intended by 
Congress when it codified this compromise in section 201(c). 
The essence of that compromise is the reaffirmation of 
authors’ copyrights in their contributions and the limited 
grant to publishers of the “privilege” of including the 
contributions in any revisions of that particular work—not, as 
the Petitioners would have it, in subsequent collections of 

8 

collective works such as those found in NEXIS. As the 
Register of Copyrights has succinctly put it: 

Although “revision” is not defined in Title 17, both 
common 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. 

147 Cong. Rec. E182, E183 (daily ed. Feb. 14, 2001), App. B 
8a. 

Petitioners and their amici seek cover for their attempted 
rewriting of section 201(c) by claiming that the alternative 
would destroy databases and impair the historical record. 
These apocalyptic predictions are as false here as they are in 
other contexts. Affirmance of the Second Circuit would not 
require publishers to remove freelance authors’ contributions 
from databases, but rather simply to pay for their reuse. 
Finding and negotiating with freelance authors is neither 
impractical nor impossible, as Petitioners and their amici 
claim. If Petitioners and their amici can find and remove 
freelance author contributions from their databases—a 
process they claim has already begun—they can, if required 
to do so, negotiate reasonable fees for reuse of the authors’ 
material in digital media. 

Finally, the Act confers upon the federal courts broad 
latitude to draft appropriate relief that does not wreak the 
havoc that publishers and their amici predict. Federal courts 
are empowered to deny broad permanent injunctive relief to 
prevailing plaintiffs in appropriate circumstances and to 
fashion narrower injunctive relief coupled with monetary 
remedies that reflect past and future payments for continuing 
reuse of authors’ contributions. There is no basis in law or 
practice for Petitioners’ ominous warnings about the 
impending destruction of databases and new media that they 
claim would flow from rejection of their argument. In fact, as 

9 

the Register of Copyrights has suggested, recognition of 
authors’ rights in this litigation would not necessarily, or even 
preferably, result in an injunction; the better result, in the 
Register’s view, would be “a monetary award that would 
compensate the authors for past and continuing unauthorized 
use of their works.” 147 Cong. Rec. E182, E183 (daily ed. 
Feb. 14, 2001), App. B 10a. 

The real consequence of affirmance of the Second Circuit’s 
decision—and the outcome that Petitioners really fear—is 
that they would have to pay fair compensation for their 
unilateral and unauthorized reuses of authors’ contributions to 
collective works. The Respondents in this case, and freelance 
authors everywhere, are entitled to no less. 

ARGUMENT 

I. THE LEGISLATIVE HISTORY OF SECTION 
201(c) DEMONSTRATES THAT IT WAS 
INTENDED TO PROTECT AUTHORS’ 
COPYRIGHTS IN CONTRIBUTIONS TO 
COLLECTIVE WORKS AND TO GRANT 
PUBLISHERS LIMITED RIGHTS IN THOSE 
CONTRIBUTIONS 

As this Court has recognized, the legislative history of the 
1976 Copyright Act is an indispensable resource in divining 
the intent of Congress. See Center for Creative Non- 
Violence v. Reid, 490 U.S. 730, 747-48 (1989). That leg- 
islative history is particularly useful where, as here, Congress 
did not expressly define the critical statutory phrase that has 
led the parties to this Court: the meaning of “any revision of 
that collective work” in section 201(c).2 

2 While Petitioners purport to address the plain meaning of this 
language, their analysis of “any revision” largely ignores the significance 
of the statutory phrase “that collective work.” As the Second Circuit 
properly understood, the phrase by its terms does not authorize “any 

10 

A. Background of the 1909 Act 

The 1909 Copyright Act did not expressly distinguish 
between the copyright in a “composite work” (as collective 
works were then known) and the copyright in a contribution 
to such a work. See, e.g., 17 U.S.C. §§ 1, 3, 10 (1909 Act); 
see also Shapiro, Bernstein & Co. v. Bryan, 123 F.2d 697, 
699 (2d Cir. 1941) (noting that a composite work is a work 
“to which a number of authors have contributed distin- 
guishable parts which they have not however separately 
registered”). Instead, the 1909 Act spoke in terms of a single 
copyright owned by a single proprietor. 17 U.S.C. §§ 1, 3, 10 
(1909 Act). Accordingly, when an author transferred rights 
to a publisher in an article or photograph, the entire copyright 
in such a work passed by statute to the publisher. 17 U.S.C. 
§ 3 (1909 Act). As an early Copyright Office study 
recognized, “the transferee of less than all the rights [the 
author] may be regarded as a mere licensee and cannot sue to 
enforce his rights without joining the owner of the residual 
rights [the publisher].” Study 11 at 1. 

Compounding the problem, the 1909 Act did not trigger 
statutory copyright protection until a work was published 
with the required copyright notice. 17 U.S.C. § 10 (1909 
Act). Publication of a “composite work” under the 
publisher’s copyright notice vested statutory copyright in the 
entire work, including the contributions, in that publisher. Id. 
§ 3. 

revision” in a vacuum, but rather with respect to a specific preexisting 
work—the particular collective work in which the author’s contribution 
was published. Petitioners do not and cannot explain how a NEXIS 
database comprising a compendium of selections from a multitude of 
collective works could possibly be considered as fairly encompassed by 
the plain meaning of “any revision of that collective work.” See 147 
Cong. Rec. E182, E183 (daily ed. Feb. 14, 2001) (statement of Register of 
Copyrights) (“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.”), App. B 8a. 

11 

These aspects of the 1909 Act scheme “greatly impeded” 
commercial transactions, producing “technical pitfalls” for 
both authors and publishers. 3 Melville B. Nimmer & David 
Nimmer, Nimmer on Copyright § 10.01[B], at 10-7 (2000). 
Courts relied on “trade custom” to determine what rights 
were conveyed, and authors were at risk of a finding that they 
ceded the entirety of their copyright to a publisher, however 
unintentionally. See Study 11 at 18, 21; see also Geisel v. 
Poynter Prods., Inc., 295 F. Supp. 331, 337 (S.D.N.Y. 1968) 
(dispute over custom and practice in the magazine publishing 
arena in 1932). Predictability regarding the legal conse- 
quences of transactions involving copyrights became a 
casualty of the 1909 Act scheme. 

Other unintended consequences worked further hardships 
on authors of contributions to collective works. Authors 
became mere licensees of the right to use their contributions 
as a result of having ceded their copyrights in such works to 
the publishers. Without joining the publishers in an infringe- 
ment action, authors could not prevent others from using their 
contributions. Study 11 at 21. If the publisher went bankrupt 
or could not be found, authors were helpless to stop 
infringers. Furthermore, the uncertainty over the legal status 
of conveyance of rights in a contribution to publishers left 
authors in the untenable position of having to prove what 
rights they retained, if any, in a transaction with the publisher 
involving a contribution to a composite work. Id. at 18, 21. 

B. The Register’s 1961 Report 

The foundation for what became section 201(c) was laid by 
the Register of Copyright’s Report on the General Revision 
of the U.S. Copyright Law issued in 1961. Addressing the 
uncertainty concerning the allocation of rights in a composite 
work, the Register put forth the following recommendation: 

12 

In the case of a periodical, encyclopedia or other 
composite work containing the contributions of a 
number of authors, the publisher should have the right to 
secure copyright. The copyright secured by the pub- 
lisher in the composite work as a whole should cover all 
of the contributions not separately copyrighted; but the 
publisher should be deemed to hold in trust for the 
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 at 88 (emphasis added). 

Under this formulation, the author would retain, albeit 
through a “trust” held by the publisher, all rights in his 
contribution, with one notable exception (the other being a 
general reference to “other rights expressly assigned”). That 
exception—the right to publish the contribution “in a similar 
composite work”—was the first step toward carving out 
certain specified rights in the contribution for the benefit of 
publishers. But the starting principle for this formulation was 
that the author would retain all rights in the contribution 
except for those specified in the provision. This principle 
remained unchanged and was the foundation of section 201(c) 
as enacted. 

C. The Debate over the Register’s Recommen- 
dation 

Not surprisingly, the Register’s recommendation ignited 
controversy. Authors’ representatives, such as Harriet Pilpel, 
expressed concern that the proposed “carve-out” for 
publishers to use the contribution “in a similar composite 
work” was more than what many authors were prepared to 
give. Copyright Law Revision, Part 2 at 151, J.A. 568a 
(statement of Harriet Pilpel). Ms. Pilpel noted that under 
current law (the 1909 Act), an author was free to argue that 
“all he gave the publisher was the right to include his 
contribution in that particular composite work.” Id. 

13 

(emphasis added). Echoing this concern, another participant 
in the debate representing the recording industry proposed 
that the phrase “similar composite work” be replaced by a 
reference to “that particular composite work,” thus insuring 
that the publisher could only use the contribution in the 
specific collective work in which it was to be first published 
(unless, of course, the parties expressly agreed otherwise). 
Id. at 153. 

Another authors’ representative explained this approach in 
terms of a presumption, once again a concept that was 
ultimately accepted (though the exceptions would be 
expanded at the publisher’s behest, as discussed below): 

[W]here a short story is published in a magazine, it 
should be presumed that the publisher has acquired only 
the first serial right, or first magazine right, or whatever 
you call it—the right to publish in that edition—and that, 
in the absence of a specific assignment of other rights by 
the author in writing, recorded, no one would be free to 
presume that the publisher owned anything else, and 
would have to deal with the author. 

Id. at 152, J.A. 570a (statement of Irwin Karp). 

While extending a publisher’s rights in a contribution to 
use in “a similar composite work” went too far for authors, 
their proposed restriction of a publisher’s use of a 
contribution to the “particular composite work” did not go far 
enough for publishers. One of the leading spokesmen for the 
publishers, Horace Manges, raised the question whether “a 
revised edition of a composite work” would be encompassed 
by the phrase “that particular composite work.” Id. at 153, 
J.A. 571a. The authors’ response was most definitely not. Id. 
at 153, J.A. 571a-572a (statement of Irwin Karp). In 
response, textbook and encyclopedia publishers proposed an 
expanded carve-out designed to allow publishers to use the 
contribution in “revised editions” of composite works other 
than periodicals (thus excluding newspapers from the benefit 

14 

of this broadened exception).3 Id. at 230, Lodging Vol. I at 
L-19. 

The Register initially resisted accommodation of 
publishers’ concerns about “revised editions.” See Copyright 
Law Revision, Part 3 at 15, J.A. 579a.4 But the publishers 
persisted, raising questions whether “a volume containing 
only half the material in ‘that particular collective work’” 
would nevertheless be considered as encompassed within the 
publishers’ presumptive privilege regarding “that particular 
collective work.” Id. at 261, J.A. 591a (statement of Bella 
Linden).5 

3 The concern expressed by textbook and encyclopedia publishers 
reflected existing trade custom. For magazines and newspapers, the trade 
custom was to convey only first serial rights. Copyright Law Revision, 
Part 2 at 152, J.A. 570a. Indeed, that is what the district court held the 
parties intended to convey here. See Tasini v. New York Times Co., 972 F. 
Supp. 804, 812 (S.D.N.Y. 1997) (finding that the conveyance of first 
serial rights was at issue but that “right to publish an article ‘first’ cannot 
reasonably be stretched into a right to be the first to publish an article in 
any and all mediums”). 

In contrast, the custom of encyclopedia publishers was markedly 
different. Thirty-volume encyclopedias were not created anew each year; 
any contributor had to realize that. See Encyclopaedia, Encyclopædia 
Britannica Online, at http://search.eb.com/bol/topic?eu=108517&sctn=24 
(last visited Feb. 9, 2001) (observing that “most major encyclopaedias” 
used “a system of continuous revision” in which “some percentage of the 
articles in a set are updated or improved in other ways on a flexible 
schedule,” and that several publishers were able “to reprint their sets on an 
annual basis and to introduce into each new printing as many revised 
entries as possible”). 

4 Hence the next version of the draft bill accorded publishers “only the 
privilege of publishing the contribution in that particular collective work.” 
Id. 

5 Petitioners seize on this statement from the legislative history as 
support for their contention that the removal of photographs from daily 
editions of The New York Times and the use of the digitized text from 
those editions in databases such as NEXIS do not destroy their status as 

15 

D. The 1964 Draft Bills 

The publishers’ concerns were reflected in the Register’s 
next draft, which was introduced to Congress in 1964 as a 
proposed general revision of the copyright laws. 
Section 14(c) established the basic principle that the author 
owned the copyright in his contribution subject to certain 
presumptive rights of the collective work publisher— 
including, for the first time in the debate over this subject, the 
right to use the contribution in “any revisions” of the 
“particular collective work” in which the contribution was 
initially published: 

(c) CONTRIBUTIONS TO COLLECTIVE WORKS.— 
Copyright in each separate contribution to a collective 
work is distinct from copyright in the collective work as 
a whole, and vests initially in the author of the 
contribution. In the absence of an express transfer of the 
copyright or of any rights under it, the owner of 
copyright in the collective work is presumed to have 
acquired only the privilege of reproducing and 
distributing the contribution as part of that particular 
collective work and any revisions of it. 

“revisions.” Pet’rs Br. at 30-31. But petitioners’ argument fails to con- 
sider the rest of the statutory language at issue. The question under 
section 201(c) is whether the reuse in NEXIS of textual material taken 
from daily editions of The New York Times constitutes “any revision of 
that collective work”—namely, “any revision” of the daily editions of The 
New York Times from which the articles were taken. No reasonable 
reading of the entire statutory language at issue can support Petitioners’ 
argument that a NEXIS database or a compendium of daily editions of 
The New York Times on CD-ROM should be considered revisions of those 
daily editions. The NEXIS database, for example, is not a revision of any 
one edition of The New York Times; it is simply a compendium of all of 
those editions, with photographs and many other portions of the original 
editions removed. See 147 Cong. Rec. E182, E183 (daily ed. Feb. 14, 
2001) (statement of Register of Copyrights) (stating the conclusion of the 
Register that the NEXIS database “is, at best, a ‘new anthology,’ and it 
was Congress’ intent to exclude new anthologies from the scope of the 
§ 201(c) privilege.”), App. B 8a. 

16 

Copyright Law Revision, Part 5 at 9, J.A. 604a (emphasis 
added); see S. 3008, 88th Cong. § 14(c) (1964); H.R. 11947, 
88th Cong. § 14(c) (1964). 

At the time, no one involved in the debate over this 
language conceived the “any revisions” exception to be 
anything other than the limited right to make changes to a 
preexisting collective work. Indeed, from the perspective of 
the authors’ representatives, their principal concern was to 
ensure that the “any revisions” language could not be used to 
enable publishers to edit each contribution to a collective 
work as part of “revising” it. Copyright Law Revision, Part 5 
at 152, J.A. 615a.6 Not only were authors assured that no 
such right was intended, they were further assured by 
publishers’ representatives that the “any revisions” language 
created a narrow exception to the author’s copyright in a 
contribution. 

The Magazine Publishers Association, for example, 
expressed the view that the “any revisions” language granted 
publishers only “very limited rights.” Id. at 149, J.A. 611a 
(statement of A. H. Wasserstrom). Even the publishers 
viewed this language as applying only to “the reproducing 
and distributing of a contribution as a part of a particular 
collective work.” Id. at 159, J.A. 612a (emphasis added). 
The publishers never envisioned this provision as broadly 
encompassing a publisher’s attempt to create a compendium 
or collection of collective works, whether in a database or 

6 Petitioners contend that this concern somehow supports their 
overbroad reading of the “any revisions” language. Pet’rs Br. at 31. That 
contention, however, assumes that the authors’ groups agreed with the 
Petitioners’ current definition of revision. In reality, neither this statement 
nor anything else in the legislative history supports the argument that 
authors signed off on an expansive interpretation of “any revisions” to 
encompass what Petitioners are now doing. All that can fairly be said is 
that authors and publishers agreed that the latter could utilize authors’ 
contributions in “any revisions” to—and only to—the particular collective 
works in which they first appeared. 

17 

otherwise. In fact, the publishers’ concern was that the “any 
revisions” language did not cover “the relatively simple and 
generally accepted right of republication [of the contribution] 
in the same periodical.” Id. Both authors and publishers, 
therefore, viewed the “any revisions” language as confined to 
reuse of the contribution in an updated version of the same 
periodical in which the contribution was originally published. 

E. The 1965 Draft Bill and Register’s Supple- 
mentary Report 

The publishers’ desire for additional clarification of their 
rights with respect to a contribution led to a further 
amendment of the provision specifically to authorize use of 
the contribution in later works “in the same series” of the 
particular collective work in which the contribution appeared. 
This amendment, together with the previous language, was 
incorporated into new section 201(c). The Register’s pro- 
posed section 201(c) was identical in all respects to the 
provision codified ten years later in the 1976 Copyright Act: 

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

Copyright Law Revision, Part 6 at 220. The addition of the 
“any later collective work” language accommodated the 
concern that the “revision” language was itself narrow in 
scope. See Copyright Law Revision, Part 5 at 149. In 
contrast, Petitioners’ current reading of “revision” reads the 
“any later collective work” language right out of existence, a 

18 

point properly appreciated by the Second Circuit. See 
Tasini v. New York Times Co., 206 F.3d 161, 167-68 (2d Cir. 
2000). 

The principal purpose of section 201(c)—to confirm and 
preserve the author’s copyright in his contribution to a 
collective work—was reaffirmed in the Register’s Supple- 
mentary Report on the 1965 Revision Bill. Copyright Law 
Revision, Part 6 at 68-69, J.A. 625a-626a. Citing to his 1961 
Report, the Register emphasized that the 1965 bill “would 
clarify and simplify the extremely confused and 
unsatisfactory situation now existing with respect to 
individual contributions that were not made for hire.” Id. at 
69, J.A. 626a-627a. In particular, the Register noted that: 

In conjunction with the notice provisions of section 403, 
the second sentence of section 201(c) would preserve the 
author’s copyright in his contribution without requiring a 
separate notice in his name or an unqualified transfer of 
all his rights to the publisher. 

Id., J.A. 627a. 

The Register also provided instructive examples of what 
the publishers’ “privileges” under section 201(c) were 
intended to encompass: 

Under this presumption, for example, an encyclopedia 
publisher would be entitled to reprint an article in a 
revised edition of his encyclopedia, and a magazine 
publisher would be entitled to reprint a story in a later 
issue of the same periodical. However, the privileges 
under the presumption are not intended to permit 
revisions in the contribution itself or to allow inclusion 
of the contribution in anthologies or other entirely 
different collective works. 

Id. (emphasis added), J.A. 627a. 

The illustration given by the Register of the use authorized 
by the “any revision of that collective work” language is 

19 

particularly noteworthy—and demonstrates how far afield the 
Petitioners’ disputed uses of Respondents’ contributions fall. 
That language was intended to entitle an encyclopedia 
publisher “to reprint an article in a revised edition of his 
encyclopedia.” Id. at 69, J.A. 627a. This example says 
nothing about a compendium of encyclopedias, but is 
confined to updated versions of the encyclopedia in which the 
contribution first appeared.7 No one, including the publish- 
ers’ representatives, ever conceived of this provision as the 
sort of broad, multi-media grant that Petitioners now claim it 
to be. 

The Register’s emphasis on what section 201(c) was not 
intended to cover reinforces this conclusion. Not only were 
publishers forbidden from making changes to the contribution 
themselves, they were expressly precluded from incorporating 
the revision into “anthologies” or “other entirely different 
collective works.” Copyright Law Revision, Part 6 at 69, J.A. 
627a. An “anthology” is a “representative collection of 
selected literary pieces or passages.” Webster’s Third New 
International Dictionary 92 (1993 ed.). An “entirely different 
collective work” was plainly meant to refer to a collective 
work other than the one in which the contribution originally 
appeared. 

The digital media in which Petitioners have republished 
Respondents’ contributions are far closer to “anthologies” of 
collective works than they are to “revisions” of the particular 
collective works included in those digital compendiums. As 
the current Register stated in her recent expression of views 
on the issues presented by this case: 

What makes today’s edition of a newspaper or magazine 
or any other collective work a “work” under the 
copyright laws—its selection, coordination and arrange- 
ment—is destroyed when its contents are dissembled 

7 See supra n.3 (discussing how encyclopedias were revised). 

20 

and then merged into a database so gigantic that the 
original collective work is unrecognizable. 

147 Cong. Rec. E182, E183 (daily ed. Feb. 14, 2001), App. B 
8a. 

In sum, a NEXIS database or a CD-ROM containing daily 
editions of The New York Times more closely resembles a 
new and different collective work (in fact, a collection of 
collective works) than mere “revisions” of the particular 
collective works encompassed within them. The limited 
privileges accorded publishers under section 201(c) simply 
cannot, consistent with its legislative history, be stretched to 
encompass uses that the drafters—including the Copyright 
Office—never intended or even envisioned. 

F. The 1976 House Report 

The essential purposes of section 201(c) as set forth by the 
Register in his 1965 Supplementary Report remained 
unchanged throughout the next decade culminating in the 
enactment of the 1976 Copyright Act. The House Report on 
the 1976 Act emphasized that “one of the most significant 
aims of the bill is to clarify and improve the present confused 
and frequently unfair legal situation with respect to rights in 
contributions.” H.R. Rep. No. 1476 at 122, J.A. 705a. 
Echoing the Register’s Supplementary Report, the House 
Report stated that section 201(c) would “preserve” the 
author’s copyright in his contribution without requiring a 
separate copyright notice and without mandating any 
“unqualified transfer” of rights to the publisher. Id. This 
was, in the words of the House Report, the “basic 
presumption” of section 201(c), which was characterized as 
“fully consistent with present law and practice, and represents 
a fair balancing of equities.” Id. at 122, J.A. 706a. 

The privileges accorded publishers under the last clause of 
section 201(c) were viewed by the House Report as “an 
essential counterpart of the basic presumption.” Id. But they 
were, nonetheless, intended to grant rights to use the author’s 

21 

contribution only “under certain limited circumstances.” Id. 
(emphasis added). The examples given of this limited grant 
paralleled those given by the Register in his 1965 
Supplementary Report; with respect to “revisions,” the only 
example given was that a publisher would be authorized to 
“reprint an article from a 1980 edition of an encyclopedia in a 
1990 revision of it.” Id. The publisher would not be 
authorized to include the contribution in a “new anthology” 
or “an entirely different magazine or other collective work.” 
Id. at 122-23, J.A. 706a. 

These characterizations of section 201(c) in the most 
definitive source of legislative history for the 1976 Copyright 
Act cannot be reconciled with Petitioners’ attempt to rewrite 
the statute. The three central themes of that legislative 
history that were established in the years from 1961-1965 are 
all evident from the 1976 Report: 

• The primary purpose of section 201(c) was to 
secure authors’ rights in contributions to collective 
works. 

• The “privileges” granted to publishers under section 
201(c) were intended to be narrow exceptions to 
authors’ copyrights in their contributions. 

• The privilege accorded publishers to reproduce and 
distribute authors’ contributions in “any revision of 
that collective work” was limited to use of the 
contributions in updates of the particular collective 
work in which those contributions originally 
appeared. The privilege does not extend to use of 
authors’ contributions in collections of collective 
works, regardless of the media in which those 
collections are reproduced and distributed. 

G. The Current Register’s Views 

In response to a recent Congressional inquiry, Marybeth 
Peters, Register of Copyrights, strongly agreed with this 

22 

reading of the legislative history of section 201(c). Like her 
predecessor more than 35 years ago, she viewed the scope of 
the section 201(c) “any revision” privilege as narrow and 
confined to a “new, amended, improved or up-to-date version 
of the original collective work.” 147 Cong. Rec. E182, E183 
(daily ed. Feb. 14, 2001), App. B 8a. She viewed the 
legislative history’s examples of “an evening edition of a 
newspaper or a later edition of an encyclopedia” as retaining 
“elements that are consistent and recognizable from the 
original collective work so that a relationship between the 
original and the revision is apparent.” Id. No such elements 
are recognizable in NEXIS, where the only similarity to the 
original collective works consists of the authors’ 
contributions. Id. 

The Register of Copyrights, both in the years leading up to 
enactment of the 1976 Copyright Act and now, has unique 
insight into the intricacies of Congress’ consideration of 
copyright legislation. The Register firmly believes that the 
Petitioners’ interpretation of section 201(c) and its legislative 
history is without foundation in the language, purpose and 
history of that provision. She urges, as do Respondents’ 
amici here, that the Second Circuit decision be affirmed – a 
result, as demonstrated here and in the Register’s recent 
letter, fully in accord with a balanced and commonsense 
reading of the statute and its legislative history. 

II. THE DIRE CONSEQUENCES PREDICTED BY 
PETITIONERS AND THEIR AMICI ARE 
OVERSTATED AND MISLEADING 

Petitioners claim that affirmance of the Second Circuit’s 
decision in this case would produce “devastating real world 
effects.” Pet’rs Br. at 49. They assert that publishers will 
have “no alternative” but to destroy CD-ROMs and delete 
freelance authors’ contributions from electronic archives. Id. 
Petitioners’ amici go even further by predicting that the 

23 

public interest in preserving a complete historical record in 
the form of electronic archives would be endangered if this 
Court were to uphold the Second Circuit’s decision. See 
Brief for Advance Publications, Inc. et al., at 4-10 (filed 
Jan. 5, 2001); Brief Amici Curiae of Ken Burns et al., at 5-11 
(filed Jan. 5, 2001). 

These predictions of disaster are overstated, misleading and 
incorrect as a matter of law and practicality. First, Petitioners 
and their amici confuse the right with the remedy. The 
question before this Court is whether section 201(c) 
authorizes the reuse of respondents’ copyrighted works in 
various electronic media. If the Court concludes, based on its 
analysis of the statute and its legislative history, that section 
201(c) does not confer the privilege asserted by Petitioners, 
the case will presumably be remanded to the district court to 
determine the appropriate remedies. At that time, Petitioners’ 
concerns about the potential impact of permanent injunctive 
relief on electronic archives could be appropriately 
considered. Petitioners may then argue, if they wish, that 
such relief should not be granted. 

Second, while petitioners and their amici appear to 
presume that purging of electronic archives would be an 
inevitable consequence of an affirmance, that is not 
necessarily so, as the Register recently made clear in her 
letter expressing her views on the issues presented by this 
case. 147 Cong. Rec. E182, E183 (daily ed. Feb. 14, 2001), 
App. B 9a. (“[A]n injunction to remove these [authors’] 
contributions from electronic databases is by no means a 
required remedy in Tasini.”). The statute vests broad 
authority in district courts to fashion appropriate injunctive 
relief; it does not require that permanent injunctive relief be 
granted in every case in which infringement is proved. 17 
U.S.C. § 502(a) (the district court “may . . . grant temporary 
and final injunctions on such terms as it may deem reasonable 
to prevent or restrain infringement of a copyright”). See 
Weinberger v. Romero-Barcelo, 456 U.S. 305, 313 (1982) (a 

24 

federal judge “is not mechanically obligated to grant an 
injunction for every violation of law”); accord Friends of the 
Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S. 
167, 192 (2000); Amoco Prod. Co. v. Village of Gambell, 480 
U.S. 531, 541-43 (1987). Instead, in “exercising their sound 
discretion, courts of equity should pay particular regard for 
the public consequences in employing the extraordinary 
remedy of an injunction.” Weinberger, 456 U.S. at 311. 

Third, should the district court on remand conclude that 
permanent injunctive relief is inappropriate, the court retains 
the authority to award respondents a “continuing royalty” for 
petitioners’ future use of individual copyrighted articles 
included in electronic archives or other digital media. See 3 
Nimmer on Copyright § 14.06[B], at 14-120 (2000). In Sony 
Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 
(1984), four Justices of this Court endorsed the view that a 
district court might choose to award a continuing royalty or a 
limited injunction rather than issue broad injunctive relief. 
Id. at 499-500 (Blackmun, J. dissenting) (the majority did not 
need to reach the issue); accord Dun v. Lumbermen’s Credit 
Ass’n, 209 U.S. 20, 23 (1908); Universal City Studios v. Sony 
Corp. of Am., 659 F.2d 963, 976 (9th Cir. 1981), rev’d on 
other grounds, 464 U.S. 417 (1984). Indeed, the Ninth 
Circuit has held that continuing royalties—and not an 
injunction—are mandated by public policy when the effect of 
an injunction would have been to deprive the public of the 
opportunity to watch the film Rear Window. See Abend v. 
MCA, Inc., 863 F.2d 1465, 1479 (9th Cir. 1988), aff’d on 
other grounds sub nom. Stewart v. Abend, 495 U.S. 207 
(1990) (concluding that “special circumstances” existed 
justifying the denial of permanent injunctive relief despite a 
finding of infringement); see also Richard Feiner & Co. v. 
Turner Entm’t Co., 98 F.3d 33, 35 n.3 (2d Cir. 1996) 
(questioning whether an injunction would be appropriate if it 
would deprive the public of certain Laurel and Hardy short 
films). Moreover, the current Register of Copyrights has 

25 

expressed the view that given the potential impact of an 
injunction on scholarship and research, any remedy in this 
litigation “should be limited to a monetary award that would 
compensate the authors for the publishers’ past and 
continuing unauthorized uses of their works.” 147 Cong. 
Rec. E182, E183 (daily ed. Feb. 14, 2001), App. B 10a. 

In Sony, Justice Blackmun expressed confidence that 
district courts would be able to fashion appropriate relief in 
copyright cases. 464 U.S. at 500. His warning that “the 
difficulty of fashioning relief and the possibility that complete 
relief may be unavailable, should not affect our interpretation 
of the statute” is as apt today as it was then. Id. 

Third, despite the alleged impossibility of negotiating fair 
compensation with authors for the reuse of their contributions 
in digital media, Petitioners and their amici have yet to give it 
a fair try. In fact, many organizations, including, for 
example, the American Society of Media Photographers and 
its collective licensing initiative, the Media Photographers 
Copyright Agency, are ready and able to facilitate 
compensation discussions between authors and publishers. 
Other organizations, such as the Copyright Clearance Center 
(“CCC”) and the Publications Rights Clearinghouse, have 
established procedures and valuation models for determining 
compensation for the use of individual copyrighted works by 
publishers, and those resources can be used by authors and 
publishers alike to ascertain the fair market value of 
electronic uses of individual works.8 

8 See Copyright Clearance Center, CCC Services, at 
http://www.copyright.com/Services/services_Portal.html (last visited Feb. 
9, 2001); National Writers Union, About the Publications Rights 
Clearinghouse, at http://www.nwu.org/prc/prcabout.htm (last modified 
July 29, 1999). In the case of stock photography, established rates exist 
that would be a guide to any determination of the licensing value of stock 
photographs. 

26 

Despite the publishers’ protestations of helplessness, they 
generally have the upper hand in compensation negotiations 
with individual authors. There is no reason to believe that 
publishers will not be able to hold their own in compensation 
discussions with authors. Their reluctance to try suggests that 
they are simply looking for an excuse, as they have all along, 
to continue to exclude authors from sharing in the financial 
rewards generated by the reuse of their contributions in 
electronic media. 

Finally, the irony of Petitioners’ forecasts of disaster is 
striking. Having gone ahead and presumed that 
section 201(c) shields them from responsibility for 
compensating authors for reuse of their contributions in 
electronic media, Petitioners and their publisher amici now 
seek cover from the adverse consequences of their unilateral 
decisions. They claim that their deeds cannot be undone 
without harming the public interest, and they claim that 
negotiations with authors over compensation are impractical. 
In other words, according to publishers, nothing can 
effectively be done now to remedy the situation, and the only 
alternative is to bootstrap their interpretation of the statute to 
justify their behavior. 

This is an arrogant and misguided perspective. Petitioners 
and their publisher amici made a unilateral and presumably 
informed decision about what they believed section 201(c) 
allowed them to do with authors’ contributions without 
paying compensation. If this Court concludes that the 
publishers’ interpretation of the statute was wrong, they 
should not be excused from the consequences of their 
erroneous interpretation. Their choice would be either to 
negotiate fairly with authors, or to litigate the question of 
appropriate remedies before the district courts. 

27 

Respectfully submitted, 

VICTOR S. PERLMAN 
AMERICAN SOCIETY OF MEDIA 

PHOTOGRAPHERS 
150 North Second Street 
Philadelphia, PA 19106-1912 
L. DONALD PRUTZMAN 
Counsel of Record 
ANDREW BERGER 
TANNENBAUM HELPERN 

SYRACUSE & HIRSCHTRITT 
LLP 
900 Third Ave. 

New York, NY 10022 
(212) 508-6739 

Attorneys for Amici American Society of 
Media Photographers, Inc. et al. 

1a 

APPENDIX A 

LIST OF INDIVIDUAL AMICI 

Advertising Photographers of America 
American Institute of Graphic Arts 
American Society of Journalists and Authors 
American Society of Media Photographers, Inc. 
American Society of Picture Professionals 
Artists Rights Society 
The Authors Guild 
Editorial Photographers 
Garden Writers Association of America 
Graphic Artists Guild 
North American Nature Photography Association 
Outdoor Writers Association of America 
Picture Agency Council of America 
Romance Writers of America 
Science Fiction Writers of America, Inc. 

The Society of American Travel Writers 
The Society of Children’s Book Writers and Illustrators 
Text and Academic Authors Association 
World Publications 
Writers Guild of America, West 

2a 

APPENDIX B 

147 Cong. Rec. E182-E183 (daily ed. Feb. 14, 2001) 

CONGRESSIONAL RECORD— 

Extension of Remarks E182 

A VIEWPOINT ON THE SUPREME COURT CASE 

———— 

NY TIMES V. TASINI 

———— 

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 responding 
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 at the heart of the case. I believe that the 
Supreme Court should affirm the decision of the court of 
appeals. 

3a 

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 
requiring 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 
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 
articles 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 entitled 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 
publishers of collective works such as newspapers and 
magazines. 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 acquires ‘‘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 collective 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 
Office worked with Congress to undertake a major revision of 

4a 

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 
identified copyright more closely with the publisher than with 
the author’’ and focused more on safeguarding the rights of 
authors, 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 giving an article to a publisher for 
use in a particular collective 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 
attorney 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 
publishers in Tasini would give them the right to exploit an 
article on a global scale immediately following its initial 

5a 

publication, 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 windfail 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 
exclusive 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 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 
direction of a networked environment, CD–ROM distribution 
is likely to become a less significant means of disseminating 
information. 

6a 

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 
finalized 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 
reproduction and delivery of copies. The 1965 Supplementary 
Report of the Register of Copyrights, a key part of the 
legislative 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 implications 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 ‘reproduction’ of ‘copies’ as 
the means of presenting authors’ works to the public.’’ The 

7a 

Report also stated that ‘‘in the future, textual 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 
communications 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 
reproduction 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 
contributions 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 
requires that they be permitted to disseminate the authors’ 
articles 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 independent of the reproduction 
and distribution rights. The media-neutral aspects of the Act 
do not somehow merge the separate exclusive rights of the 
author. 

8a 

REVISIONS OF COLLECTIVE WORKS 

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

Although ‘‘revision’’ is not defined in Title 17, both 
common 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 un-related 
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, coordination 
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 
encyclopedia. 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 

9a 

left of 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 
coordination 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. 
Additionally, the sheer volume of articles from a multitude of 
publishers of different collective works obliterates the 
relationship, 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 freelance contributions have been infringed 
does not necessarily require that electronic databases be 
dismantled. Certainly future 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 authors’ articles. I share the concern 
that such an injunction would have an adverse impact on 
scholarship and research. However, the Supreme Court, in 
Campbell versus 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 

10a 

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 
authors for the publishers’ past and continuing unauthorized 
uses of their works. Ultimately, the Tasini case should be 
about how the authors should be compensated for the 
publishers’ unauthorized use of their works, and not about 
whether the publishers must withdraw those works from their 
databases. 

Sincerely, 

MARYBETH PETERS, 

Register of Copyrights.