The Software & Information Industry Association, the 
National Federation of Abstracting & Information Services, 
Dow Jones Reuters Business Interactive, LLC, The Gale 
Group, Inc., The Dialog Corporation, and West Publishing 
Corporation (collectively, “amici”) respectfully submit this 
brief on consent and in support of The New York Times Co., 
Newsday Inc., Time Inc., LEXIS/NEXIS, and University 
Microfilms International (collectively, “Petitioners”) in this 
case.1 For the reasons stated below, amici urge that the Court 
reverse the decision of the Court of Appeals for the Second 
Circuit. 

INTERESTS OF AMICI 

The Software & Information Industry Association 
(“SIIA”) is the leading trade association committed to 
promoting and protecting the interests of the software and 
information industries. SIIA represents over 1,000 member 
companies, including prominent publishers of software and 
related products and multimedia titles for reference and 
education. SIIA’s Content Division is comprised of more 
than 100 large and small companies that publish and 
distribute information or provide technology and services that 
enable the marketing and delivery of information products 
and services. 

The National Federation of Abstracting & 
Information Services (“NFAIS”) is a not-for-profit scientific 
and educational organization for producers and providers of 
databases. Founded in 1958 to advance the international 
exchange of scientific and technical information by using 
advanced information handling technologies, the 
organization continues to provide forums and to produce 

1 No counsel for any party authored this brief in whole or in part, 
and no person or entity other than the amici, their members, or their 
counsel, made a monetary contribution to the preparation or submission 
of this brief. 

2 

publications on matters of interest to its members and related 
communities. Members include not-for-profit organizations, 
commercial enterprises, academic institutions, and 
government agencies that produce electronic information 
services for the research community and the general public. 

Dow Jones Reuters Business Interactive, LLC (d/b/a 
Factiva) (“Factiva”) provides world-class global news and 
business information online, including Dow Jones and 
Reuters newswires, The Wall Street Journal, The New York 
Times, The Washington Post, and over 7,000 other 
publications from around the world. The information 
provided by Factiva includes current news, historical 
references, scientific and technical journals, local-language 
publications, market research, and investment analysis 
reports. 

The Gale Group, Inc. (“Gale”) is a world leader in 
reference work and electronic information publishing for 
libraries, schools, and businesses. Gale creates and maintains 
more than 600 databases that are published online, in print, 
and in microform and that consist in whole or in part of 
collective works licensed from others, including newspapers, 
magazines, newsletters, scientific periodicals, and scholarly 
journals. Gale also licenses its proprietary content to nearly 
100 organizations for integration within web-based 
information services. 

The Dialog Corporation (“Dialog”) is a leading 
provider of Internet-based information and technology 
services to professionals in business, science, engineering, 
and law. Dialog’s customers have instantaneous access to 
hundreds of databases containing over nine terabytes 
(equivalent to more than six billion pages) of textual 
materials, including thousands of collective works licensed 
from other companies. 

3 

West Publishing Corporation (“West”) is the largest 
provider of print publications and electronic information to 
the United States legal community and courts. Its many 
online services include Westnews, which comprises more 
than 5,800 news and business publications, including 
newspapers, magazines, and newsletters, plus other 
information sources such as newswires, research reports, and 
transcripts of radio and television broadcasts.2 

The individual corporate amici and the members of 
SIIA and NFAIS share a deep commitment to the effective 
protection of intellectual property rights – both their own, 
upon which their economic viability depends, and those of 
others. They file this amicus brief not because they are 
hostile to the rights of authors – freelance or otherwise – to 
protect their works from unauthorized copying or 
distribution. That is not the issue in this case. Rather, the 
only issue before the Court is the proper interpretation of a 
single, special statutory provision, establishing a presumptive 
contract right that controls situations in which no express 
written contract defines the respective rights of authors and 
publishers. The question is not whether freelance authors 
should be paid for their efforts – by definition, they were 
paid when their writings were accepted for publication. The 
question before the Court is whether Congress, in enacting 
Section 201(c) of the Copyright Act of 1976, meant, as the 
Second Circuit held below, to exclude electronic versions of 
periodicals from the coverage of this statutory presumption. 

As the creators of the world’s leading electronic 
databases, amici have a direct and profound interest in the 
proper resolution of this issue. Their respective databases 
include the complete editorial content of many millions of 

2 Gale, Dialog, and West are indirect wholly owned subsidiaries 
of The Thomson Corporation. 

4 

separately published newspapers, magazines, and other 
periodicals provided pursuant to contracts entered into with 
thousands of different publishers. Amici do not deal directly 
with the authors (be they freelance or staff) of any of the 
individual articles contained in these publications, and they 
would have no possible way of verifying the contractual 
terms upon which those works were accepted for publication. 
Instead, they depend upon the representations and warranties 
received from those publishers that they have the rights to 
permit electronic use of their works, together with an 
understanding that under Section 201(c), absent an express 
contractual term to the contrary, any grant of the statutorily 
defined rights to the original publisher includes the electronic 
version as well. Based upon these shared and long held 
expectations, derived from the statute and reaffirmed by 
contractual assurances, amici and others have built a 
worldwide database industry that represents the most 
comprehensive archive of written material in history. 
Millions of subscribers, in virtually all fields of human 
endeavor, rely upon those databases to be complete and 
comprehensive. They serve as electronic libraries that have 
fundamentally, and irreversibly, changed the way 
information is accessed and research is performed in this 
country and around the world, and they have, in large 
measure, replaced the hard copy collections in most libraries. 

The decision below places all of this at risk. By 
holding that the Section 201(c) presumption does not apply to 
the electronic versions of print publications, the court below 
created the very real possibility that buried within these 
electronic databases are some unknown and unknowable 
number of articles by unidentified authors who may now be 
in a position to pursue copyright infringement claims based 
upon the Second Circuit’s decision. Indeed, since that 
decision issued, three separate purported class actions were 
filed on behalf of freelance authors whose works are alleged 

5 

to fall within this category.3 The individual corporate amici 
are each defendants in one or more of these actions, and now 
face the disruption of their businesses, as well as claims for 
damages, all because of the Second Circuit’s unduly narrow 
and legally erroneous reading of Section 201(c). 

SUMMARY OF ARGUMENT 

Section 201(c) of the Copyright Act provides: 

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. 

In other words, absent a contract expressly providing 
otherwise, the publisher of a “collective work” (such as The 
Washington Post or Time Magazine) is “presumed” to have 
acquired the right to use any individual articles copyrighted 
by their authors only in (i) the original collective work, (ii) 
any “revision” of that work, or (iii) later works in the same 
series. 

Simply reading that statutory language, and giving it 
its ordinary English meaning, the most sensible interpretation 
is that an electronic edition of The New York Times – whether 
created for archival purposes or to permit distribution by 
electronic means – would be either a manifestation of the 
original “collective work” communicated through a different 

3 The Authors Guild, Inc. v. The Dialog Corp., No. 00 Civ. 6049 
(S.D.N.Y. filed Aug. 15, 2000); Posner v. Gale Group, Inc., No. 00 Civ. 
7376 (S.D.N.Y. filed Sept. 28, 2000); Laney v. Dow Jones & Co., Inc. 
No. 00 Civ. 769 (D. Del. filed Aug. 21, 2000). 

6 

medium of expression or, at most, a “revision” of that 
original work to accommodate the requirements of the 
electronic medium in which it is fixed. Either way, under 
Section 201(c), the grant of rights to publish the article would 
be presumed to include electronic publication as well. That 
conclusion flows comfortably from the statutory language 
itself, and until the Second Circuit’s decision, it was so 
understood. See Greenberg v. National Geographic Soc’y, 
No. 97-3924-CIV, 1998 U.S. Dist. LEXIS 18060 (S.D. Fla. 
May 14, 1998); Tasini v. New York Times Co., 972 F. Supp. 
804 (S.D.N.Y. 1997). Indeed, in the twenty years between 
enactment of the Copyright Act of 1976 and the 
commencement of this case, amici are aware of no previous 
litigant who has asserted the position adopted by the court 
below. 

But the Second Circuit concluded that electronic 
versions were not entitled to coverage under Section 201(c), 
thus ignoring the basic principle that the Copyright Act of 
1976 was written to embrace new technologies, such as 
electronic forms of publication, and to treat both new and old 
pursuant to the same media neutral standards. In so doing, 
the court below cited three supposed characteristics of these 
electronic works to hold that they could not possibly be 
“revisions” within the meaning of Section 201(c): 

(1) the fact that when print publications are transferred to 
certain electronic media, the format and layout of the 
text may change and certain advertisements and other 
matter may be edited out; 

(2) the fact that a single electronic database may contain 
numerous issues of any given or multiple different 
periodicals, thus somehow combining them into one 
gigantic electronic anthology that staples, glue, and 
covers would have maintained as separate in their 
original form; and 

7 

(3) the fact that database users, employing modern 
electronic search technology, can and often do 
retrieve individual articles on specified subjects 
without the need to view the material within the 
context of its original print edition. 

None of these factors – alone or in combination – support the 
holding below. 

Had this new rule been adopted through prospective 
legislative amendment, rather than an erroneous judicial 
decision, it would be a rather simple matter for the petitioners 
and other print publishers to change the forms by which they 
contract with freelance contributors and to provide expressly 
for a transfer of all manner of electronic publishing rights. 
Indeed, during the pendency of this litigation, a number of 
publishers have made such changes. The great danger caused 
by the decision below, however, stems from the fact that 
decades worth of preexisting publications have been 
incorporated into electronic databases in reliance upon the 
protection of Section 201(c). There is no economically 
feasible way for the publishers now to identify and to secure 
express written consent from the countless freelance authors 
whose contributions may be included in these collections, nor 
is there any practical way for database providers to solve the 
problem themselves. Thus, were this Court to affirm the 
decision below, and were an injunction to be entered, 
irreparable harm would be done to petitioners, amici, the 
public, and even to what may be the silent majority of 
freelance authors who are likely pleased that their articles, 
the print copies of which have long since become 
inaccessible, are still available electronically to researchers 
and others. Accordingly, amici respectfully urge that the 
decision below be reversed. 

8 

ARGUMENT 

I. Nothing in the History of the Copyright Act of 
1976 Supports the Second Circuit’s Interpretation 
of Section 201(c). 

Apparently, to the Second Circuit, an issue of Time 
Magazine fixed in a format permitting its storage and display 
by means of a computer represents a fundamentally different 
work than the same magazine as embodied in print on paper. 
The Copyright Act of 1976, however, adopts exactly the 
opposite view by insisting upon media neutrality. As Section 
102(a) states: 

Copyright protection subsists . . . in original 
works of authorship fixed in any tangible 
medium of expression, now known or later 
developed, from which they can be perceived, 
reproduced, or otherwise communicated, 
either directly or with the aid of a machine or 
device. (emphasis added) 

As the House Report stated: 

[I]t makes no difference what the form, 
manner, or medium of fixation may be – 
whether it is in words, numbers, notes, sounds, 
pictures, or any other graphic or symbolic 
indicia, whether embodied in a physical object 
in written, printed, photographic, sculptural, 
punched, magnetic, or any other stable form, 
and whether it is capable of perception 
directly or by means of any machine or device 
‘now known or later developed.’ 

H.R. Rep. No. 1476, 94 

th Cong., 2d Sess. 52 (1976), 
reprinted in 1976 U.S.C.C.A.N. 5659, 5665 (quoting 17 
U.S.C. § 102(a)). 

9 

That is, a “work of authorship” remains a “work of 
authorship” without regard to the medium – new, old, or not 
yet invented – from which it can be reproduced. Congress 
had the vision and foresight to understand that the media 
through which copyrighted works might be communicated 
were evolving rapidly as technology changed. The clearly 
manifested intent of Congress was to apply the same rules to 
all such works in a media neutral manner.4 

It also is clear that Congress understood and intended 
that electronic databases would be treated in the same 
fashion. Electronic databases were already an important new 
medium of expression when Congress adopted the Copyright 
Act of 1976. As early as the 1960s, companies began to 
utilize the extraordinary capabilities of the evolving computer 
technology to make and store copies of periodicals and other 
works electronically. 

Indeed, in 1967, Professor (later Justice) Benjamin 
Kaplan prophetically wrote: 

4 In fact, the concept of media neutrality in copyright law 
originated long before the Copyright Act of 1976. In Holmes v. Hurst, 
174 U.S. 82, 89 (1899) this Court wrote: 

It is the intellectual production of the author which the copyright 
protects, and not the particular form which such production 
ultimately takes, and the word ‘book,’ as used in the statute, is 
not to be understood in its technical sense of a bound volume, 
but any species of publication which the author selects to 
embody his literary product. 

As a leading commentator has written in describing that case: 

The Court thus enunciated a conception of authorial creation in 
which the ‘intellectual production’ exists independently of the 
medium of expression. 

Jane C. Ginsburg, Creation and Commercial Value: Copyright Protection 
of Works of Information, 90 Colum. L. Rev. 1865, 1887 (Nov. 1990). 

10 

You must imagine, at the eventual heart of 
things to come, linked or integrated systems or 
networks of computers capable of storing 
faithful simulacra of the entire treasure of the 
accumulated knowledge and artistic 
production of past ages, and of taking into the 
store new intelligence of all sorts as produced. 
The systems will have a prodigious capacity 
for manipulating the store in useful ways, for 
selecting portions of it upon call and 
transmitting them to any distance, where they 
will be converted as desired to forms directly 
or indirectly cognizable, whether as printed 
pages, phonorecords, tapes, transient displays 
of sights or sounds, or hieroglyphs for further 
machine uses. Lasers, microwave channels, 
satellites improving on Comsat’s Early Bird, 
and, no doubt, many devices now unnamable, 
will operate as ganglions to extend the reach 
of the systems to the ultimate users as well as 
to provide a copious array of additional 
services. 

Benjamin Kaplan, An Unhurried View of Copyright 119 
(1967). 

Congress was keenly aware of this phenomenon when 
drafting the 1976 Act. Indeed, Congress received direct 
testimony predicting that computer databases would come to 
incorporate vast libraries of stored books and periodicals. 
See Copyright Law Revision: Hearing on H.R. 2223 Before 
the House Subcomm. on Courts, Civil Liberties, and the 
Admin. of Justice of the Comm. of the Judiciary, 94 

th Cong. 
338 (1975) (statement of Paul G. Zurkowski, President, 
Information Industry Ass’n) (under the Act, collective works 
including encyclopedias and periodicals would be input into 
computer databases, and through computer equivalents of the 

11 

Readers’ Guide, could be used to access individual 
materials). See also Copyright Law Revision, Part 3, 
Preliminary Draft for Revised U.S. Copyright Law and 
Discussions and Comments on the Draft, 88 

th Cong., 2d Sess. 
418 (1964) (statement of George Schiffer, National 
Community Television Ass’n) (computer databases were 
“kinds of libraries as yet uninvented . . . when a manuscript 
will be fed into a computer and ordered as needed”). 

Nothing in Section 201(c) or its legislative history 
indicates that Congress intended to impede the progress of 
this nascent database industry or to exclude it from that 
provision’s coverage. To the contrary, it was for the express 
purpose of examining the relationship between computer 
technologies and copyright law that Congress created the 
National Committee on New Technological Uses of 
Copyrighted Works (“CONTU”) in 1974. See Act of Dec. 
31, 1974, Pub. L. No. 93-573, § 201, 88 Stat. 1873, 1873- 
1874 (1974); H.R. Rep. No. 1476, 94 

th Cong., 2d Sess. 116 
(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5731. After 
years of study, CONTU recommended (i) that computer 
programs continue to be protected as “literary works,” (ii) 
that electronic machine readable databases be analogized to 
compilations under existing copyright principles, and (iii) 
that the existing law did not need to be altered to 
accommodate these new technologies. Final Report of the 
National Commission on New Technological Uses of 
Copyrighted Works at 11-12, 14-15, 38, 46 (1978) (“CONTU 
Final Report”).5 Congress accepted that recommendation, 

5 Among the witnesses who appeared before the CONTU panel 
were representatives of two leading database companies of the day, Mead 
Data Central and The New York Times Information Bank. CONTU Final 
Report, App. F, at 119. See also id., at 38 (“[A] data base is a 
compilation and thus a proper subject for copyright. This entitlement to 
copyright is not diminished by the fixation of the data base in a medium 
requiring the intervention of a computer to communicate its information 
content.”) (footnote omitted). 

12 

effectively codifying CONTU’s findings. Computer 
Software Copyright Act, Pub. L. No. 96-517, § 12, 94 Stat. 
3015, 3028 (1980) (codified at 17 U.S.C. §§ 101, 117 
(1980)). 

Moreover, settled case law indicates that the courts 
have been quite comfortable applying this doctrine of media 
neutrality in the infringement context. It is by now a well- 
accepted tenet of copyright law that reproducing a work in a 
digital medium creates an infringing “copy.”6 See, e.g., 
Stenograph, L.L.C. v. Bossard Assocs., Inc., 144 F.3d 96, 100 
(D.C. Cir. 1998) (installation of software onto computer 
constitutes copying within the meaning of the Copyright 
Act); MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 
517-519 (9th Cir. 1993), cert. dismissed, 510 U.S. 1033, 
(1994) (loading software onto computer’s random access 
memory constitutes “copying” of copyrighted software); 
Rand McNally & Co. v. Fleet Mgmt. Sys., Inc., 600 F. Supp. 
933, 942 (N.D. Ill. 1984) (“it is clear that inputting a 
copyrighted work into a computer would violate the 
copyright holder's exclusive rights. . . . [t]he way that 

information must be formatted in order to be of use by a 
particular computer or program should not prevent a finding 
of infringement”). See also 2 Melville B. Nimmer & David 
Nimmer, Nimmer on Copyright (2000) § 8.01[B] at 8-16 
(“the fact that a work in one medium has been copied from a 
work in another medium does not render it any less a 
‘copy’”). There is little doubt that if any of the amici had 
chosen to include one of petitioner’s publications in an 
electronic database without permission, that would have 
constituted making a “copy” of that work for infringement 

6 Section 101 defines the term “copies” as material objects “in 
which a work is fixed by any method now known or later developed, and 
from which the work can be perceived, reproduced, or otherwise 
communicated, either directly or with the aid of a machine or device.” 

13 

purposes. Yet, to the Second Circuit, the same electronic 
version that is enough like the original publication to 
constitute a “copy” for infringement purposes is neither a 
“copy” of the publication itself nor even a “revision” of that 
work for purposes of Section 201(c). This simply makes no 
sense. 

For these reasons, it is inappropriate to conceive of 
the Section 201(c) privilege as exercisable only in a specific 
medium. A revision is a revision for purposes of that 
provision, just as a work is a work and a copy is a copy, 
regardless of the medium of expression. The question, then, 
is whether the electronic versions of publishers’ periodicals 
are recognizable revisions of their paper copy counterparts. 
In this case they clearly are. 

II. Any Differences Between Amici’s Databases and 
the Original Print Publications Are Immaterial As 
A Matter of Copyright Law. 

The Second Circuit’s opinion turns in large part on 
certain legally irrelevant elements of format and layout that 
are allegedly “lost” in the transfer of periodicals from print to 
electronic form. Many of these changes inevitably occur 
when the words of a publication are translated into ASCII 
code, or some other text-based format, for storage within the 
database. Others involve minor editing, such as the omission 
of advertisements, the deletion of maps and paid death 
notices, and changes in general appearance that may occur 
when petitioners’ periodicals are stored electronically. The 
decision below ignores two fundamental facts, however: 
first, that many of these changes are no different in kind or 
degree than those that occur when there are two or more 
editions of the same print periodicals that no one – including 
the Second Circuit – would deny qualify as “revisions” under 
Section 201(c) and, second, that these types of changes are 
wholly irrelevant as a matter of copyright law. 

14 

A. Transfer Into Digital Format. 

As noted, many of the changes are occasioned by the 
machine-readable format in which database text is gathered 
and stored. Pursuant to contract, publishers electronically 
transfer to amici the same files that are used to create the 
print versions of their periodicals. This transfer generally 
takes place in ASCII7 or another standardized digital “text” 
file format that allows computers to process and store that 
data efficiently. The text in that coded format has the same 
editorial content as does the original print edition, but it is 
formatted for display on a computer screen, not a printed 
page. For example, the “above the fold” placement the 
Second Circuit seemed so intent to preserve (206 F.3d at 164) 
has no particular relevance within the context of a computer 
screen. Many, but not all, electronic databases only store the 
text, without any accompanying graphics, while others may 
store graphics separately in linked files that are programmed 
to produce the appropriate graphic on screen when the 
associated text is retrieved. But the advantages of storing the 
textual contents of a database in a text-based file format such 
as ASCII are twofold – first, it is more efficient, and second, 
it permits the full text of articles to be searched 
electronically. 

The data received by amici is coded to allow for 
electronic indexing and searching, and then stored on disk 
drives or other storage devices that are the electronic 
equivalent of library stacks. The data is stored as it was sent 

7 ASCII code allows textual materials to be stored in a translated 
digital format. ASCII stores that information using seven-digit binary 
numbers consisting of various sequences of 0s and 1s to represent 
different characters. For example, the binary sequence 1010000 
represents an uppercase “P,” while the sequence 1110000 represents a 
lowercase “p.” 

15 

– as a series of binary digits (0s and 1s) that, when read by a 
computer, are translated back into text. The data itself, 
however, has no specific arrangement - it is simply 
information that resides in a particular storage medium.8 It 
reflects the same copyrighted expression as the original 
printed text; only the medium of expression has changed. 
Given the media neutrality of the Copyright Act, that change 
is irrelevant. 

To the Second Circuit this difference in storage 
medium was important, and the court even drew a distinction 
between graphical and text-based files.9 This is unsupported, 
however, as a matter of copyright law. Text is text, whether 
stored as an image in a graphical format or as searchable 
words in ASCII code. The Second Circuit’s approach is akin 
to arguing that the motion picture The Bridge Over the River 
Kwai in its original theatrical format is a completely different 
work than the videotape or DVD renditions, because a film 

8 As is true for all digital media, it is not necessary that memory in 
a database be structured so as to store information in an order or 
arrangement that mimics that of the original print version, so long as the 
computer program has the ability to assemble the correct words in the 
correct order when the user wishes to read them on the screen or cause 
them to be printed. For this reason, it is senseless to focus, as the Second 
Circuit did, on the print arrangement of a periodical in determining 
whether an electronic copy qualifies as a “revision” under Section 201(c). 
See Robert C. Denicola, Copyright in Collections of Facts: A Theory For 
The Protection of Nonfiction Literary Works, 81 Colum. L. Rev. 516, 531 
(April 1981) (“Data bases are clearly permissible subjects for copyright 
under the 1976 Act, yet it is often senseless to seek in them a specific, 
fixed arrangement of data. There is simply a collection of information 
stored in an electronic memory . . . . In such a context there is no 

particular arrangement to protect.”). 

9 See Tasini v. New York Times Co., 206 F.3d 161, 169 (2d Cir. 
2000) (stating that the GPO database presents “a slightly more difficult 
issue than does NEXIS” because GPO “includes some image-based, 
rather than text-based files”). 

16 

through which light is projected, a magnetic tape containing 
an analog video recording, and a digital video disc are 
physically three very different media. Proper respect for the 
media neutrality of the Copyright Act eliminates the gap 
between law and logic reflected by such an argument. The 
Second Circuit appears to have missed that point in this case. 

B. The Variations Between Amici’s Databases and 
the Original Print Publications Are No Different 
Than Those Among Existing Print Revisions of 
Petitioners’ Periodicals. 

The Second Circuit’s analysis also places heavy 
emphasis on the fact that when a newspaper such as The New 
York Times is transferred to an electronic database certain 
formatting changes occur and some features and 
advertisements may be deleted. What the court below 
overlooks is the fact that when the print versions of those 
publications are offered in multiple editions, the same types 
of changes occur, yet these editions undoubtedly qualify as 
“revisions” of the original periodicals for purposes of Section 
201(c). 

For example, each weekday The New York Times is 
published in numerous different print editions. The copy of 
The New York Times that is delivered to a Manhattan 
resident’s doorstep before dawn is different from the copy 
that same person might purchase at a newsstand later that 
day, and both would differ from the copies of the national 
and regional editions available for sale or delivery elsewhere 
in the country. These editions differ in both content and 
format. Even the local versions of the Times are updated 
with late-breaking stories and news not available for print in 
the earliest morning edition, while the versions of the Times 
delivered in the New York suburbs might contain separate 
“Westchester” or “Connecticut” news sections in addition to 
or in lieu of some of the standard “Metro” coverage. The 
version purchased on a newsstand in San Francisco or 

17 

Washington, D.C. may well omit much of the local New 
York news entirely. Each regional version of this national 
newspaper contains somewhat different advertisements. All 
of these differences affect the layout of each edition of the 
paper, and format can vary considerably from edition to 
edition, with whole sections omitted from some versions that 
are present in others. Yet each is recognizably The New York 
Times of a given date, and each of these editions would be 
protected by the same copyright and qualify as either “that 
particular collective work” or a “revision” for purposes of 17 
U.S.C. § 201(c). The Second Circuit stated as much in its 
opinion. See 206 F.3d at 167 (“[t]he most natural reading of 
the ‘revision’ of ‘that collective work’ clause is that Section 
201(c) protects only later editions of a particular issue of a 
periodical, such as the final edition of a newspaper”). Accord 
H.R. Rep. No. 1476, 94 

th Cong., 2d Sess. 122-123 (1976), 
reprinted in 1976 U.S.C.C.A.N. 5659, 5738 (“[u]nder the 
language of this clause a publishing company could reprint a 
contribution from one issue in a later issue of its magazine”). 

The differences between the electronic and the print 
versions of a periodical are no different in nature or in scope 
than the differences among various print editions of the same 
publication. And just as those differences do not preclude the 
later print editions from qualifying as “revisions,” they do not 
preclude electronic versions from the same treatment under 
Section 201(c). 

C. Selection Is Protected Independently from 

Arrangement. 

A review of basic copyright principles with respect to 
“compilations” compels the same conclusion. The Second 
Circuit erred in requiring that a revision reflect precisely the 
same selection, coordination, and arrangement as the print 
original. Amici’s databases retain the defining copyrightable 
element of the collective works that they reproduce – the 
editorial determination of the original selection of articles to 

18 

be included. But both the Copyright Act and an extensive 
body of case law make clear that either the selection, or the 
coordination, or the arrangement, or any combination of 
these elements of a collective work may be protectible – 
there is no requirement that all three of these characteristics 
be present to qualify for copyright protection. 17 U.S.C. § 
101 (defining “compilation” as “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”) (emphasis added). See Feist Publications, Inc. 

v. Rural Tel. Serv. Co., 499 U.S. 340, 358 (1991) (for 
compilation to merit protection, “the facts must be selected, 
coordinated, or arranged ‘in such a way’ as to render the 
work as a whole original”); Key Publications, Inc. v. 
Chinatown Today Publishing Enters., Inc., 945 F.2d 509, 512 
(2d Cir. 1991) (for compilation to qualify for copyright 
protection, there must be original selection, coordination, or 
arrangement of data). 

Just as all three of these protectible elements do not 
need to be present for a compilation to qualify for copyright 
protection, all three do not need to remain constant for a 
work to qualify as either a “copy” or a “revision” of the 
original work. For example, if the selection of articles in a 
newspaper was not protected apart from their arrangement, 
then The New York Post could publish the entire content of 
The Washington Post, and avoid infringing the latter’s 
collective work, simply by placing it in a tabloid format. 
This is plainly not the law. 

The minor formatting changes that occur in the 
transfer from print to electronic form are, quite simply, 
immaterial for copyright purposes. U.S. v. Hamilton, 583 
F.2d 448, 451 (9 

th Cir. 1978) (“[t]rivial elements of 
compilation and arrangement, of course, are not 
copyrightable since they fall below the threshold of 

19 

originality”); Key Publications, Inc. v. Chinatown Today 
Publishing Enters., Inc., 945 F.2d at 514-516 (only changes 
to the essential elements of a compilation – the selection and 
arrangement of contents thereof – are relevant to a copyright 
infringement analysis; other changes are of no import). 
Rather, these are necessary formatting differences inherent in 
use of the digital medium. For these reasons, the Second 
Circuit’s focus on format and arrangement is misplaced, and 
seriously misinformed the analysis upon which its decision 
was based. 

III. The Fact That Multiple Periodicals May Be Stored 
Together Does Not Remove Electronic Databases 
From Protection Under Section 201(c). 

The Second Circuit’s second ground for concluding 
that an electronic version of a periodical in a database creates 
an entirely different “new anthology” rather than a 
“revision” of the printed work turns on the manner in which 
the works are stored together within the computer. 
According to the court below, if multiple issues of the same 
periodical or, on a larger scale, collections of different 
periodicals, are stored together in a computer, each issue 
loses its identity for copyright purposes and becomes part of 
a new, giant agglomeration. That is, the outcome under 
Section 201(c) will vary depending upon how an individual 
database company has chosen to organize its servers and 
other storage devices and the manner in which it may or may 
not choose to segregate discrete publications. Again, the 
court below simply failed to recognize the principle of media 
neutrality embodied in the Copyright Act. 

There is no factual basis for the conclusion that a 
print publication loses its identity as a discrete compilation of 
articles and other materials when it is stored in an electronic 
database. Information identifying the publication, date, and 
page invariably is stored with the underlying text and any 
user viewing a particular news item certainly would be able 

20 

to see that it was, for example, found in The Washington Post 
of a given date, on a particular page in a certain section. 
Periodical issues and pages do not cease to exist in the 
electronic format; they merely take on a different physical 
form. Computers and their associated digital storage media 
have the capacity to record and to store vast quantities of data 
in very small amounts of space. This is part of their power. 
To say that this ability to store the equivalent of an entire 
library efficiently on a single disk drive somehow 
automatically creates a new compilation, and obliterates the 
old, improperly attributes copyright consequences to a 
technological capability. 

Again, analogies from the print world illustrate the 
point. Suppose a learned article is published in the Harvard 
Law Review. Each issue is published initially within paper 
covers, yet each year’s eight issues also can be purchased 
(complete with an index) bound together in buckram as a 
single volume. Is this bound volume entitled to the statutory 
privilege under Section 201(c)? When a library chooses to 
shelve the Harvard Law Review on a bookcase next to the 
law journals of Yale or Stanford, is its identity once again 
lost? Has each law review article become part of some new 
collective work? Obviously not. Yet, according to the 
Second Circuit, if the law library stored these publications on 
a common server, they automatically would become a single 
new collective work. This simply makes no sense. 

Prior Second Circuit case law evidences a more 
sensible approach than that taken below. See CCC 
Information Servs., Inc. v. Maclean Hunter Market Reports, 
Inc., 44 F.3d 61, 68 n. 8 (2d Cir. 1994) (original aspects of 
selection and arrangement were present even though 
compilation was included in a more extensive database). 
Accordingly, the Second Circuit erred in concluding that a 
“new anthology” is created whenever multiple works are 
stored together electronically in a particular storage medium. 

21 

This is no more accurate than saying that a “new anthology” 
is created when two books are stored together on the same 
shelf. If media neutrality is to mean anything, it must mean 
that selection is constant regardless of the medium of 
fixation. The Second Circuit’s contrary rule renders every 
server, database, and storage unit a potentially infringing new 
anthology, subject to suit by any disgruntled copyright holder 
who, although granting rights for electronic publication, has 
not given specific permission to have his or her work stored 
electronically with other works. 

IV. The Manner In Which Third Parties Can Search 
Through Electronic Materials Is Immaterial As A 
Matter of Copyright Law. 

The final element in the Second Circuit’s analysis – 
and the one that seems most central to its conclusion – was 
its focus upon the fact that users of electronic databases often 
are apt to retrieve individual articles from a database, rather 
than the entire issue of the periodical in which the article first 
appeared. This ability to call up an article standing alone 
apparently struck the court below as representing the one 
thing that Section 201(c) does not permit a compilation 
owner to do – namely, to sell a freelance author’s article 
apart from the compilation in which it was published. The 
Second Circuit, however, has jumped to the wrong 
conclusion for several reasons. 

First, it is not the case that periodical publishers are, 
contrary to their contractual and copyright obligations, 
selling individual freelance articles for inclusion in electronic 
databases. Rather, the contracts of which amici are aware 
provide for the transfer of electronic rights to entire issues, 
covering some specific period of years, of whatever 
publication is involved. These are simply licenses of the 
original collective work or, at most, electronic “revisions” of 
such works for Section 201(c) purposes. The Second 
Circuit’s concern relates to how individual researchers may 

22 

choose to use a particular database to access individual 
articles, not to the manner in which petitioners and database 
providers contract for the electronic publication of 
periodicals. 

Second, no matter how end users may choose to 
search amici’s databases, it is a basic tenet of copyright law 
that third party conduct is irrelevant to claims of direct 
infringement, such as those upon which the allegations in this 
case are founded. Thus, it is irrelevant whether people 
choose to retrieve individual articles or the totality of any 
given periodical from amici’s databases. Sony Corp. of 
America v. Universal City Studios, 464 U.S. 417, 446 (1983) 
(“[t]hird party conduct would be wholly irrelevant in an 
action for direct infringement of respondents’ copyrights”); 
Matthew Bender & Co. v. West Publishing Co., 158 F.3d 693 
(2d Cir. 1998), cert. denied, 526 U.S. 1154 (1999) (rejecting 
infringement claims based on argument that third party users 
could rearrange data on a CD-ROM to create an infringing 
configuration). By focusing on the end user’s ability to 
access individual works, however, the Second Circuit ignored 
these well-established rules and imposed direct infringement 
liability on publishers based upon these third party actions. 
There is no basis in law to do so. 

Finally, the Second Circuit’s decision ignores the fact 
that what really causes end users to retrieve individual 
articles rather than entire issues of periodicals has nothing to 
do with the way these materials are stored in an electronic 
database, as opposed to the original print media. Rather, it 
results from nothing more complicated than the difference 
between reading today’s newspaper or magazine and doing 
research in an archive. One sits down to read the current 
edition of The Wall Street Journal or The Economist in order 
to discover what has transpired in the world since the last 
issue. Whether the publication is read from cover to cover, 
or is simply skimmed, context and timeliness are key 

23 

elements of the value of the experience. Archived 
periodicals, on the other hand, tend to be used in a very 
different manner, primarily for research. It would be a rare 
event to read through a three-year-old copy of The New York 
Times as if it were current, but not at all unusual to turn to 
such a publication, among others, in search of historical 
information concerning a particular subject. 

The only difference brought about by electronic 
databases is their powerful search tools that permit users to 
search through vast archives of periodicals for specific 
information on particular subjects in a prompt and efficient 
manner. Functionally, they do nothing different in kind from 
the various printed indices (such as The Readers’ Guide to 
Periodical Literature) that researchers historically have used 
to find relevant articles from past publications sitting on 
library shelves. Digital search engines may provide speed 
and power not previously available, or even imagined. But 
the fact that they can be used to retrieve discrete articles from 
within archives is simply a function of the nature of research, 
not an indication that publishers or database providers are 
marketing separately individual articles that they do not own. 

V. The Second Circuit’s Decision Undermines the 
Purpose of the Copyright Laws. 

If the Second Circuit’s decision is allowed to stand, 
the practical and inevitable consequence will be to jeopardize 
the integrity of the electronic databases that, today, 
increasingly represent the primary archive of our written 
history. 

Were the effect of the Second Circuit’s decision 
purely prospective – establishing a new rule to govern future 
dealings between authors and publishers – the impact of its 
misreading of Section 201(c) could be addressed in future 
contract negotiations. But the real difficulty arises from 
retroactively changing the rules under which the information 

24 

industries have developed their electronic libraries in the 
twenty years since the Copyright Act was adopted. 

10 The 
fact that a thriving database business has been built over the 
past two decades based upon the premise that the publishers 
acted lawfully in providing their content, indicates one of two 
things – either these two copyright dependent industries are 
actually populated by unscrupulous pirates or, more likely, 
the Second Circuit’s decision was a major departure from the 
shared understanding upon which both publishers and 
database providers have relied. 

The task the Second Circuit would impose on 
publishers – to attempt to locate contractual documentation 
covering millions of articles spanning decades and, if 
necessary, to track down any freelance authors (or the 
successors to their copyright interests) and secure missing 
electronic publication rights – may or may not even be 
possible. At a minimum, however, it would take a long time 
and cause chaos in the interim. Database providers, such as 
the amici, do not even have the means directly to determine 
which of the contents of their libraries are problematic, since 
they are entirely dependent upon the publishers to deliver 
content that was legally acquired and transferred. The 
economic realities are such that the most likely consequence 
of an affirmance of the decision below would be the 
wholesale deletion of identifiable freelance articles, and 
perhaps more if such identification was too difficult or 
expensive. 

10 In 1979, shortly after the Copyright Act was adopted, there were 
some 300 computer databases in existence, 221 database producers, and 
59 online services. Laura D’Andrea Tyson & Edward F. Sherry, 
Statutory Protection for Databases: Economic & Public Policy Issues 
(submitted to Collections of Information Antipiracy Act: Hearings on HR 
2652 Before the Subcomm. on Courts and Intellectual Property of the 
Comm. on the Judiciary, 105 

th Cong. 67 (1997)). By 1997, the industry 
had grown to 5,739 computer databases, 2,312 producers, and 899 online 
services. Id. 

25 

The victims would not be limited to the publishers 
and the database providers, but would likely include many 
authors as well. For every freelance author who objects to 
the inclusion of his or her articles in an electronic database 
without some supplemental payment, there are likely dozens 
of authors – paid and unpaid – who are quite pleased that 
their articles, the print copies of which disappeared long ago 
into recycling bins (or fireplaces), or which are only available 
in remote and inaccessible libraries, still live on in electronic 
form, being retrieved, read, and used online by new 
generations of scholars, teachers, students, and even other 
freelance authors anywhere on the globe. And the greatest 
victims would be the public at large, since the growth of the 
database industry, which has put vast information resources 
at the fingertips of everyone with access to a computer, 
would be placed in doubt. 

11 

As one commentator has pointed out, the future is not 
the problem, it is the past that is at stake: 

What about the millions of articles online in 
full text that date back to the 1970s and 1980s, 

11 The importance of easy access to such information has been 
recognized for decades. See CONTU Final Report, at 38 (“Copyright 
applied to databases should encourage the development and 
dissemination of useful stores of information to make this information 
readily available to the public. In addition, database proprietors should 
be encouraged to publish and register their copyrighted works, thereby 
creating a public record of the existence of the works and, in turn, make 
possible public awareness and utilization of their works.”). The Register 
of Copyrights has recently reaffirmed this point: “Collections of 
information, or databases, are increasingly important to the U.S. economy 
and culture, both as a component in the development of the global 
information infrastructure and as a means of facilitating scientific, 
educational and technological advancement.” Collections of Information 
Antipiracy Act: Hearings on H.R. 2652 Before the Subcomm. on Courts 
and Intellectual Property of the Comm. on the Judiciary, 105 

th Cong. 15 
(1997) (statement of Marybeth Peters, Register of Copyrights). 

26 

and are not covered by explicit author 
agreements? No longer would databases 
contain publications cover-to-cover in full text. 
Only selected articles would be available 
online – and comprehensive searches of full- 
text files would be a thing of the past, since you 
can’t search what isn’t there. 

Nancy Garman, The Tasini Decision and Database Integrity, 
Online, Jan. 1, 2000, at 8. The scope of this destruction 
should not be underestimated. Removal of freelance 
materials would include not only freelance works such as 
book reviews in newspapers and short stories in magazines, 
but also news stories written by freelancers, and op-ed pieces 
written by concerned citizens, scholars, and politicians. The 
result will be a loss of confidence in the completeness and 
accuracy of electronic archives themselves, and in the 
medium of electronic research as a whole, Kurt A. Wimmer, 
The Digital Dilemma, The National Law Journal, October 25, 
1999, at B10, and will have a “crushing impact . . . on the 
widespread and easy access to information that we now take 
for granted.” Garman, supra, at 8. 

These consequences are fundamentally at odds with 
the express purposes of the Copyright Act: to increase and 
not to impede the “harvest of knowledge,” Harper & Row, 
Publishers, Inc. v. Nation Enters., 471 U.S. 539, 545 (1985), 
and to “promot[e] broad public availability of literature, 
music, and the other arts.” Twentieth Century Music Corp. v. 
Aiken, 422 U.S. 151, 156 (1975). It has long been recognized 
that “[t]he monopoly privileges that Congress has authorized, 
while ‘intended to motivate the creative activity of authors 
and inventors by the provision of a special reward,’ are 
limited in nature and must ultimately serve the public good.” 
Fogerty v. Fantasy, Inc., 510 U.S. 517, 526 (1994) (citation 
omitted). 

27 

There can be no doubt that if the respondents prevail 
in this action, the public interest will not be served, and the 
public availability of decades’ worth of valuable historical 
information will be lost forever because we, as a society, will 
be denied the full use of our technological capabilities. Such 
a result would inhibit the very “Progress of Science and 
useful Arts” that copyright is intended to promote. U.S. 
Const. art. I, § 8, cl. 8. 

CONCLUSION 

Accordingly, the decision of the Court of Appeals for 
the Second Circuit should be reversed. 

Respectfully submitted, 

ARTHUR R. MILLER 
HENRY B. GUTMAN 

1545 Massachusetts Avenue 

Counsel of Record 

Cambridge, Massachusetts 02138 
MARTHA H. KIMES 

(617) 495-4111 

SIMPSON THACHER & 

BARTLETT 

JAMES F. RITTINGER 
425 Lexington Avenue 
MARK A. FOWLER 

New York, New York 10017 

SATTERLEE STEPHENS 

(212) 455-2000 

BURKE & BURKE LLP 
230 Park Avenue 
New York, New York 10169 
(212) 818-9200 

Counsel for Amici 

January 5, 2001